Chevron Intellectual Property LLC v. Tim Bruce
Claim Number: FA1402001544867
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Melissa A. Alcantara of Dickinson Wright PLLC, Washington D.C., USA. Respondent is Tim Bruce (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <texaco-oil-us.com>, registered with ENOM, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2014; the National Arbitration Forum received payment on February 21, 2014.
On February 21, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <texaco-oil-us.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 February 26, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2014 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@texaco-oil-us.com. Also on February 26, 2014, 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 March 24, 2014, 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, Chevron Intellectual Property LLC, is one of the world’s leading integrated energy companies with a global workforce of over 58,000 company employees and 3,800 service station employees. Complainant is active in all facets of global energy industry, including research, exploration, production, and transportation of crude oil and natural gas; refining, marketing, and distribution of transportation fuels and lubricants; manufacturing and sales of petrochemical products; generation of power and production of geothermal energy; providing energy efficiency solutions; and development of future energy resources, including research for advanced biofuels.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TEXACO mark (e.g., Reg. No. 57,902, registered December 4, 1906) as well as other TEXACO registrations worldwide.
The at-issue domain name incorporates the TEXACO mark in its entirety and Respondent has merely added the terms “oil” and “us,” two hyphens, and a generic top-level domain (“gTLD”) “.com.”
The at-issue domain name is not being used in connection with an active website.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent uses the domain name to enhance its check fraud operation. Respondent is using the domain name as the extension for an email address in order to impersonate Complainant online, and to mislead consumers to believe that Respondent’s “car-wrap” offer originates with Complainant. Respondent’s is passing itself off as Complainant through a deceptive e-mail scheme.
Respondent is using the domain name to intentionally attract Internet users to Respondent’s “car-wrap” offer by creating a likelihood of confusion with Complainant’s mark. Respondent’s attempt to pass itself off as Complainant evidences bad faith. Respondent’s registration of the domain name is evidence of opportunistic bad faith. Respondent had actual knowledge of Complainant’s mark. Respondent registered the <texaco-oil-us.com> domain name on November 20, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TEXACO mark.
Respondent is not authorized to use Complainant’s trademark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired rights in its TEXACO mark.
Respondent uses the <texaco-oil-us.com> domain name in an email address in order to impersonate Complainant and defraud consumers.
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 demonstrates rights in the TEXACO mark by way of its multiple USPTO trademark registrations of such mark. Any one of Complainant’s USPTO registration is sufficient evidence of Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”).
In forming the at-issue domain name Respondent takes the TEXACO mark and adds a hyphen along with the descriptive term “oil,” adds a hyphen along with the geographic identifier “us” and appends the top-level domain name “.com” thereto. The term “oil” suggests Complainant’s oil related business and the term “us” suggest its operations within the United States. Therefore instead of distinguishing the two, the added terms further any false associate between the <texaco-oil-us.com> domain name and Complainant’s TEXACO trademark. Given the foregoing, the Panel finds that the at-issue domain name is confusingly similar to Complainant’s TEXACO mark pursuant to Policy ¶ 4(a)(i). See Chevron Intellectual Property LLC v.Gavrilenko, FA1501962 (Nat. Arb. Forum Aug. 7, 2013) (finding <texaco-oil.com> confusingly similar to the TEXACO mark, and noting that the addition of “oil” was non-distinctive because it pointed directly to the main product offered in connection with the TEXACO mark); see also Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the 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 an 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 and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Tim Bruce” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the at-issue domain name to send emails to unknowing consumers. The emails state “Place Texaco Oil Logo on your car for Four Hundred Dollars a week, Send us feedback if interested <recruit@texcao-oil-us.com>” and contain content that Respondent copied directly from Complainant’s legitimate website. Respondent’s intent is that consumers falsely believe that Respondent’s “car-wrap” offer originates with Complainant. Thereby, Respondent’s at-issue domain name enables a for-profit scheme to perpetuate a fraud. Respondent’s use of the <texaco-oil-us.com> domain name in a blatant attempt to pass itself off as Complainant in order to perpetrate fraud is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Coldwell Banker Real Estate LLC v. piperleffler piperleffer / null, FA1529565 (Nat. Arb. Forum Dec. 27, 2013) (finding respondent’s use of the disputed domain name in an email address to pass itself off as the complainant online did not amount to a bona fide use or legitimate noncommercial or fair use of the domain name).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) bad faith circumstances are present as well as other circumstance which show that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent uses the <texaco-oil-us.com> domain name to intentionally attract Internet users to Respondent’s “car-wrap” scam by creating a likelihood of confusion between Respondent’s <texaco-oil-us.com> email address and the TEXACO trademark. As alluded to above, Respondent uses the at-issue domain name to send emails from a faux “Hiring Manager” at Texaco, saying “Place Texaco Oil Logo on your car for Four Hundred Dollars a week, Send us feedback if interested <recruit@texcao-oil-us.com>.” Thus, Respondent uses the at-issue domain name to hold itself out as a representative of Complainant in order to mislead the emails’ recipients into falsely believing that Respondent’s online “car-wrap” offer is a legitimate offer from Complainant. Indeed, Complainant has received e-mails from concerned consumers regarding this scam. Therefore, the Panel finds that Respondent is attempting to pass itself off as Complainant and that Respondent registered and is using the <texaco-oil-us.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Coldwell Banker Real Estate v. piperleffler piperleffler / null, FA1529565 (finding that the Respondent’s use of an email address with the at-issue domain name as the extension to pose as a representative of Complainant and defraud small business owners evidenced bad faith under Policy ¶ 4(b)(iv)).
Furthermore, given that Respondent has no relationship with Complainant or the TEXACO brand, Respondent’s registration of the confusingly similar <texaco-oil-us.com> domain name is evidence of opportunistic bad faith. See Veuve Clicquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Co., D2000-0163 (WIPO May 1, 2000) (“‘VEUVECLICQUOT.ORG’” is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”); see also Mahindra & Mahindra Ltd. v. Pace, D2011-2189 (WIPO Feb. 19, 2012) (“It is well known that the registration of a domain name confusingly similar to a famous trademark by any entity that has no relationship to that mark may be, in certain circumstances, sufficient evidence of bad faith use and registration.”)
Finally, Respondent had actual knowledge of Complainant’s rights in the TEXACO mark at the time it registered the at-issue domain name. Respondent’s prior knowledge is clear from the notoriety of Complainant’s TEXACO trademark and the fact that the <texaco-oil-us.com> domain name combines the renowned TEXACO mark with terms suggestive of Complainant’s business. Registering a domain name that one knows is confusingly similar to the trademark of another indicates bad faith registration and use under Policy ¶4(a)(iii). 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <texaco-oil-us.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 26, 2014
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