Exxon Mobil Corporation v. John Doe as Holder of Domain Name <mobil-1-oil.com>
Claim Number: FA1307001507695
Complainant is Exxon Mobil Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is John Doe as Holder of Domain Name <mobil-1-oil.com> (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mobil-1-oil.com>, registered with ENOM, 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.
Scott R. Austin, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2013; the National Arbitration Forum received payment on July 1, 2013.
On July 1, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <mobil-1-oil.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 July 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 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@mobil-1-oil.com. Also on July 1, 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.
A timely Response was received and determined to be complete on July 16, 2013.
On July 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Scott R. Austin, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
1. Complainant has been using the mark MOBIL since at least as early as the 1930s and the mark MOBIL 1 since at least as early as the 1970s to identify Complainant as the source of a variety of oil and gas products around the world;
2. Complainant has obtained trademark registrations for the MOBIL mark with the United States Patent & Trademark Office (“USPTO”). See Reg. No. 0337002 registered on July 28, 1936;
3. Complainant has obtained trademark registrations for the MOBIL 1 mark with the United States Patent & Trademark Office (“USPTO”). See Reg. No. 1,044,603 registered on July 27, 1976);
4. Respondent registered the <mobil-1-oil.com> disputed domain name on April 11, 2013;
5. Respondent’s disputed domain name is confusingly similar to Complainant’s marks because it incorporates Complainant’s MOBIL and MOBIL 1 marks in their entirety and merely adds two hyphens, the generic top-level domain (“gTLD”) “.com,” and the generic term “oil” to the Complainant’s mark;
6. The presence of two hyphens, the generic top-level domain (“gTLD”) “.com,” and the generic term “oil” is insufficient to negate the confusing similarity between Respondent’s domain name and Complainant’s marks;
7. Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by Complainant’s MOBIL marks or affiliated with Complainant;
8. Respondent has no rights or legitimate interests in the disputed domain name because it resolves to a Google error page and not an active website, and as such Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use;
9. Respondent has no rights or legitimate interests in the disputed domain name because Respondent uses the disputed domain to swindle money and personal information from unsuspecting individuals through a phishing/payment scam in which Respondent misrepresents itself via e-mail as a hiring manager for Complainant using a false name and offers $300 a week to wrap their cars in advertising using Complainant’s marks but only after recipients wire Respondent multiple $1,200 payments to apply brand wrappings to their cars. Respondent’s scam also demands each recipient provide to Respondent their full legal name, e-mail addresses, home addresses, and phone numbers and as such does not constitute a bona fide offering of goods and services or for a legitimate noncommercial or fair use;
10. Respondent’s phishing scam is, in itself, evidence of bad faith;
11. Respondent is attempting to scam individuals out of their money by confusing them into believing that Respondent is affiliated with Complainant when he is not;
12. Respondent registered the disputed domain name in bad faith because Respondent had knowledge of Complainant’s rights in the MOBIL 1 mark as shown by the presence of the descriptive term “oil” in the domain name, and Respondent’s use of Complainant’s mark in its scam.
B. Respondent makes the following contentions:
1. Respondent contends the individual listed as registrant is not the individual that registered the domain name;
2. Respondent contends it is the victim of identity theft;
3. Respondent contends it is shocked it was listed in this domain name’s registration;
4. Respondent requests the individual’s name be removed from the disputed domain name’s registration;
5. Respondent requests the domain name be transferred to Complainant.
Complainant owns numerous registrations for the MOBIL and MOBIL 1 marks throughout the U.S. and around the world;
Complainant’s marks were registered in the U.S and many other countries well before Respondent registered its domain name on April 11, 2013;
Respondent’s disputed domain name, <mobil-1-oil.com> domain name is substantially similar to Complainant’s mark, because it incorporates Complainant’s MOBIL and MOBIL 1 marks in their entirety as the first part of the disputed domain name, and adds only two hyphens, the generic top-level domain (“gTLD”) “.com,” and the generic term “oil” to the Complainant’s marks, which could also be interpreted as descriptive of Complainant’s oil and gas products. As such, these additions do not distinguish the disputed domain name from Complainant’s marks but may in fact add to the disputed domain name’s confusing similarity to Complainant’s marks.
Respondent’s WHOIS information identifies Respondent as registrant of the disputed domain name.
Respondent is not commonly known by Complainant’s MOBIL or MOBIL 1 marks, nor is Respondent authorized by Complainant to use either of Complainant’s marks.
Respondent is not affiliated with Complainant, nor an authorized employee, vendor, supplier, or distributor of Complainant’s goods or services.
The disputed domain name does not resolve to any active website, and instead resolves to a Google error page.
Respondent is using the disputed domain name to operate a phishing/payment scam to swindle individuals out of their money and personal information by confusing them into believing that Respondent is affiliated with Complainant.
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.
Preliminary Issue 1: Redaction of Respondent’s Identity
Respondent contends that it has been the victim of identity theft. Respondent expresses concern and distress at being listed as the owner of this domain name. Other than Respondent’s assertions and expressions of concern, Respondent has provided no evidence in support of its contention.
The Panel finds that the person referenced in the Complaint as Respondent is the person listed in the WHOIS database as registrant, as confirmed by the registrar of record, ENOM, Inc. As such, the Panel finds the named Respondent is the “holder of a domain-name registration against which a complaint is initiated” which meets the definition of a “respondent” for the purposes of the Policy (see UDRP Rule 1—definition of “respondent”). Without evidence in support of the identity theft claimed by Respondent, the Panel is compelled to rely upon the evidence provided in the record and complete its role to decide this case on the merits to prevent recurring disputes, as discussed in more detail below. The Policy requires a determination of “bad faith” on the part of the Respondent to satisfy Policy ¶ 4(a)(iii).
The Panel also finds, however, that whoever operates the domain name at issue appears to be engaged in the theft of personal information and money from unsuspecting individuals for a living. According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” The Panel has determined that the circumstances of the present case are exceptional, including the claim of identity theft by Respondent, and as such warrant the redaction of Respondent’s personal information from the Panel’s decision. Consequently, based on such circumstances and in an abundance of caution, the Panel chooses to redact Respondent’s personal information from the decision. In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Nat. Arb. Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents. See also Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Nat. Arb. Forum July 25, 2007).
Preliminary Issue 2: Consent to Transfer
Respondent consents to transfer the <mobil-1-oil.com> domain name to Complainant. However, Respondent claims the true registrant has used his identity without his authorization, and that of Google, Inc., as the purported administrative contact, and thus Respondent does not actually control the domain name. Conversely, Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel.
The Panel notes that UDRP cases that have considered circumstance such as this, where the named Respondent agrees to transfer the domain name in question to Complainant, have taken widely disparate approaches to reach ultimately the same result, transfer of the domain name to the Complainant.
The cases that have dealt with the consent to transfer scenario appear to be split between two approaches. First, there are those cases where the Panel decides to forego the traditional UDRP analysis and order an immediate transfer of the domain name, considering that such consent represents the sufficient sole basis for a transfer without findings of fact or conclusions under Policy ¶ 4(a). See, e.g., Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
In contrast are those consent–to-transfer cases where the circumstances compel the Panel to rule on the merits and consider such consent as an element in the appreciation of all the Policy elements. See, e.g., Brainetics LLC v. Profile Group / DNS Manager, FA1302001486915 (Nat. Arb. Forum April 16, 2013) (Deciding to analyze the UDRP elements to deal with cybersquatting because “[T]he Panel finds as in other prior cases, that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them”); Krea Icerik Hizmetleri Ve Produksiyon Anonim Sirketi v. Sherene Blackett / Abstract Holdings International Ltd, FA1303001489266 (Nat. Arb. Forum April 29, 2013) (Although empowered to forego UDRP analysis, Panel will not do so where common request for transfer is absent and Complainant did not consent to transfer without decision on the merits); Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008) (“However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be [analyzed] along with the findings in accordance with the Policy”); Amegy Bank Nat’l Assoc. v. Admin, LLC, FA 132547 (Nat. Arb. Forum June 29, 2010); accord Gassan Diamonds B.V. v. Van Etten Bernardus Jacobus, AF-0149b (eResolution May 25, 2000) (finding that despite a willingness to transfer by the respondent, any lack of settlement or actual transfer compels panel to issue a decision to prevent recurring disputes). The scope of the Policy is to deal with cybersquatting, which has been defined as the “deliberate, bad faith, abusive registration of domain names in violation of others rights.” Brainetics LLC v. Profile Group / DNS Manager, FA1302001486915 (Nat. Arb. Forum April 16, 2013), quoting Final Report of the WIPO Internet Domain Name Process 29 (1999),available at http://www.wipo.int/amc/en/processes/process1/report/finalreport.html.
Given that the use of the disputed domain name is in furtherance of a scam involving the theft of personal information and money from unsuspecting individuals, the Panel finds that Respondent’s defense is not a compelling account, and that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel.
The Panel decides, therefore, that it will not forego the traditional UDRP analysis and order the immediate transfer of the domain names, but instead elects to make findings of fact regarding compliance with the Policy and analyze the case under the elements of the UDRP.
The at-issue domain name is confusingly similar to a mark in which the
Complainant has trademark rights.
Complainant has used the MOBIL and MOBIL 1 marks in soliciting various oil and gas products around the world. Complainant asserts that it is the owner of the MOBIL mark, as well as the MOBIL 1 mark, and provides evidence of its various international trademark registrations, including registrations with the USPTO for the MOBIL mark (Reg. No. 0337002, filed February 28, 1936, registered July 28, 1936) and the Mobil 1 mark (Reg. No. 1,044,603 filed November 7, 1975, registered July 27, 1976). The filing dates of these marks predate Respondent’s registration of its disputed domain name by at least 37 years. The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) in demonstrating its rights in the claimed marks through federal trademark registrations, and that such rights date back to the date on which Complainant filed its respective trademark applications. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under [UDRP] ¶ 4(a)(i) through registration of the mark with the USPTO); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel agrees that USPTO registration is all that is needed in a case such as this where both parties reside within the United States. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant next alleges that Respondent has registered the <mobil-1-oil.com> domain name, which Complainant claims merely adds two hyphens, the gTLD “.com,” and the generic term “oil” to the mark. The Panel agrees that neither the gTLD nor the addition of hyphens constitute meaningful deviations from Complainant’s mark that would weaken or negate the substantial similarity between the disputed domain names and Complainant’s marks. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel also agrees that the descriptive term “oil” enhances confusing similarity as that term necessarily implies the products sold under the Complainant’s MOBIL and MOBIL 1 marks. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The Panel thus finds that the <mobil-1-oil.com> domain name is confusingly similar to the Complainant’s mark under 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that according to WHOIS, Respondent is [REDACTED], the name of a living individual that is different in sight and sound from Complainant’s MOBIL or MOBIL 1 marks Complainant thus concludes Respondent is not commonly known by Complainant’s MOBIL or MOBIL 1 marks. Complainant adds that Respondent is not affiliated with Complainant. The Panel notes that the listed Respondent has claimed that he is not the actual registrant of this domain name, and that he fears his identity has been stolen. The Panel also notes that the only other contact information in the WHOIS database lists “Google, Inc.” The Panel finds that regardless of how fictitious or misappropriated the WHOIS information may be, there is ultimately no basis for finding that Respondent is commonly known by the <mobil-1-oil.com> domain name under Policy ¶ 4(c)(ii).
Complainant next asserts that the <mobil-1-oil.com> does not resolve to any active website, and instead resolves to a Google error page. The Panel notes that Complainant’s evidence as set forth in an Exhibit to the Complaint suggests that there is no active website associated with the domain name, and the Internet user is instead given the message “The request URL / was not found on this server. That’s all we know.” The Panel agrees that Respondent’s failure to make an active use of the domain name for a website is evidence that Respondent lacks any Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use regarding the domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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)).
Complainant also argues that Respondent has elected to use the <mobil-1-oil.com> domain name to swindle people through e-mail to operate a phishing/payment scam. Complainant contends that Respondent misrepresents itself as “Adam Ferro, Hiring Manager, Mobil 1 Oil,” and engages in a scam wherein he offers $300 a week to the recipients of his scam if they have Complainant’s brand wrapping applied to their cars.as advertising, and then requests the recipient to wire him multiple $1,200 payments to apply the brand wrappings. Complainant asserts that Respondent also demands the recipients full legal name, e-mail addresses, home addresses, and phone numbers. There is nothing bona fide, or legitimate, about such a use. The Panel notes that Complainant provides an e-mail correspondence in which Respondent explains to his reader that they will be compensated $300 a week to let him “rent” the space on the individual’s car where the MOBIL 1 advertisements will be placed. After several e-mails between the Respondent and his recipient, Respondent gets down to brass tacks in requesting two $1,200 payments to one “Tanaya Mason” of Texas through a MoneyGram wiring service. The Panel agrees that the Policy does not envision a suspicious, nefarious scheme such as this “decal application process” to constitute either a Policy ¶ 4(c)(i) bona fide offering of services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, particularly when those services use the trademark of another. See, e.g., Caterpillar Inc. v. Iroiran Co., FA 1059302 (Nat. Arb. Forum Sept. 14, 2007) (“Respondent is using the <caterpillar-business.com> domain name to operate a website that fraudulently holds itself out as Complainant . . . Respondent further seeks to gain access to Internet users’ E-Gold account information, presumably for nefarious purposes. The Panel finds that Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent registered and uses the at-issue domain name in bad faith.
Complainant argues that Respondent is attempting to scam individuals out of their money and personal information by confusing them into believing that Respondent is affiliated with Complainant. Complainant explains that Respondent passes himself off as Complainant in an attempt to swindle individuals into paying multiple $1,200 wire transfers. The Panel note Respondent’s use of a series of e-mails provided as an Exhibit to the Complaint, in which Respondent employs the <mobil-1-oil.com> domain name, outlines several complicated steps that Respondent puts the recipient through, ultimately requesting $2,400 total in cash wire transfers. The Panel finds that Respondent’s attempt to pass itself off as Complainant in order to swindle e-mail recipients out of money and personal information is evidence of a Policy ¶ 4(b)(iv) intent to register and use the domain name in furtherance of bad faith commercial confusion. 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); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Complainant also argues that Respondent’s phishing scam is, in itself, evidence of bad faith. Respondent in its phishing/payment scam requests from each recipient of its e-mails an array of personal information as to their address, age, e-mail, and phone number. The Panel finds that Respondent’s Policy ¶ 4(a)(iii) bad faith is evidenced by this attempt to convince Internet users to hand over personal and sensitive information. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Complainant next argues that Respondent had knowledge of Complainant’s rights in the MOBIL 1 mark prior to the registration of Respondent’s disputed domain name. Complainant claims that Respondent’s bad faith is obvious through the presence of the descriptive term “oil” in the domain name, and Respondent’s use of the mark in its scam. The Panel agrees that in this case there can clearly be Policy ¶ 4(a)(iii) bad faith as Respondent had actual knowledge of Complainant’s rights in its decades old registered and well known marks when registering the domain name that included “oil” and used Complainant’s logos in Respondent’s car wrapping advertisements scam. See 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds the foregoing actions taken by Respondent constitute bad faith registration under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mobil-1-oil.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: August 12, 2013
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