Chevron Intellectual Property LLC v. Ryan G Foo / PPA Media Services
Claim Number: FA1407001572486
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <texacochevron.com>, registered with Internet.bs Corp.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 30, 2014; the National Arbitration Forum received payment on July 31, 2014.
On August 8, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbi-tration Forum that the <texacochevron.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 August 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 2, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@texacochevron.com. Also on August 12, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 September 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 owns the TEXACO trademark by means of its registration with the United States Patent and Trademark Office ("USPTO") (Registry No. 57,902, registered December 4, 1906).
Complainant owns the CHEVRON trademark by means of its registration with the USPTO (Registry No. 364,683, registered February 14, 1939).
Complainant uses the TEXACO and CHEVRON marks to conduct its business in the global energy industry.
Respondent registered the <texacochevron.com> domain name on or about November 21, 2004.
The domain name is confusingly similar to the TEXACO and CHEVRON marks.
Respondent has not been commonly known by the disputed domain name or either of the TEXACO or CHEVRON marks.
Respondent has no connection to or relationship with Complainant.
The disputed domain name resolves to a web page featuring links to web sites related to the marketing of credit card services and energy-related businesses, including links to the websites of direct competitors of Complainant.
It may be presumed that Respondent profits from the receipt of click-through fees generated by the operation of the linked pages.
Respondent’s use of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent’s employment of the domain name disrupts Complainant’s business.
Respondent’s use of the domain name creates confusion among Internet users as to the possibility of Complainant’s sponsorship of the resolving web page.
Respondent knew of Complainant and its rights in the TEXACO and CHEVRON marks at the time of its domain name registration.
Respondent both registered and uses the contested domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to trademarks in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the TEXACO trademark by reason of its registration of the mark with a national trademark authority, the U.S. Patent and Trademark Office ("USPTO"). The same may be said with regard to its CHEVRON mark. See, for example, Priceline.com, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1547179 (Nat. Arb. Forum Apr. 24, 2014) (finding that USPTO registration satisfies the requirement of Policy ¶ 4(a)(i) that a UDRP complainant have rights in a mark in order to advance a claim that a domain name is identical or confusingly similar to that mark).
This is true without regard to whether Complainant has acquired rights in its mark by virtue of its registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Chile). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complainant can demon-strate rights in its mark in some jurisdiction).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the disputed <texacochevron.com> domain name is substant-ively identical to the TEXACO and CHEVRON marks as it is comprised of the two complete marks, with only the addition of the generic Top Level Domain (“gTLD”) “.com.” This combination and alteration of the marks does not save the resulting domain name from the realm of confusing similarity or identity under the stand-ards of the Policy. See Fitness Anywhere, Inc. v. Mode Athletics, FA 1320667 (Nat. Arb. Forum May 20, 2010), the panel there finding that: “Respondent’s <trxsuspensiontraining.com> … domain name is confusingly similar to Com-plainant’s TRX and SUSPENSION TRAINING marks because it combines Complainant’s marks and merely adds the generic top-level domain “.com.”
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name or either of the TEXACO or CHEVRON marks, and that Respondent has no con-nection to or relationship with Complainant. Moreover, the WHOIS record for the <texacochevron.com> domain name identifies the registrant only as “Ryan G Foo / PPA Media Services,” which does not resemble the domain name. On this rec-ord we must conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLD-TRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding, based on the relevant WHOIS information and other evidence in the record, that a UDRP respondent was not commonly known by the <cigaraficionada.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii)).
We next observe that Complainant contends that Respondent’s use of the con-tested <texacochevron.com> domain name is neither a bona fide offering of goods or services, nor a legitimate or noncommercial fair use, in that the domain name resolves to a web page featuring links to websites promoting credit card services and energy-related businesses, including links to commercial compet-itors of Complainant, and that it may be presumed that Respondent profits in the form of click-through fees from the operation of those links. On these facts, we agree with Complainant’s assertion that Respondent’s employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate or noncom-mercial fair use under Policy ¶ 4(c)(iii). See ALPI-TOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007), the panel there finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We conclude from the evidence that Respondent’s employment of the contested <texacochevron.com> domain name as alleged in the Complaint disrupts Com-plainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding, under Policy ¶ 4(b)(iii), that a respondent engaged in bad faith registration and use of disputed domain names by using them to operate a commercial search engine with links to websites offering the products of a UDRP complainant’s competitors).
We also conclude from the evidence that Respondent has attempted to employ a domain name which is substantively identical to Complainant’s TEXACO and CHEVRON trademarks to profit commercially by causing confusion among Internet users as to the possibility of Complainant’s sponsorship of or affiliation with the resolving web page. Under Policy ¶ 4(b)(iv), this, too, is proof of Re-spondent’s bad faith in the registration and use of the domain name. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel there finding that:
Respondent is using the disputed domain name to operate a web-site which features links to competing … commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith regis-tration and use pursuant to Policy ¶ 4(b)(iv).
For these reasons, we find that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <texacochevron.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 16, 2014
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