Chevron Intellectual Property LLC v blazer, harry
Claim Number: FA1409001578526
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Blazer, Harry (“Respondent”), represented by Colette Y. Fergusson of Fergusson Legal, Inc., Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chevronna.com>, <chevronna.net>, <chevronnorthamerica.com>, and <chevronnorthamerica.net>, registered with Network Solutions, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 5, 2014; the National Arbitration Forum received payment on September 8, 2014.
On September 11, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <chevronna.com>, <chevronna.net>, <chevronnorthamerica.com>, and <chevronnorthamerica.net> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 September 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 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@chevronna.com, postmaster@chevronna.net, postmaster@chevronnorthamerica.com, postmaster@chevronnorthamerica.net. Also on September 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 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 October 1, 2014.
Complainant submitted an Additional Submission on October 6, 2014.
On October 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant currently owns over 70 active U.S. trademark and service mark registrations covering the CHEVRON trademark. These date back to registrations of CHEVRON for petroleum products issued in 1939 (U.S. Reg. 364,683) and 1945 (U.S. Reg. 416,133). Today, the name CHEVRON, often with Complainant’s “Hallmark” logo illustrated below (collectively the “CHEVRON mark”), and sometimes with other words and components – is registered in the United States for goods and services spanning more than a dozen International Classes.
Complainant also owns International Registrations for the CHEVRON mark with protection extending into over 40 countries under the Madrid Protocol, in addition to active national registrations in over 100 countries.
Statement of the Facts
A. Complainant’s Use of the CHEVRON Trademark
Complainant 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 and Complainant maintains a significant presence in North America. Complainant is active in all facets of the 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 sale 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 adopted “Chevron” as its corporate name in the 1970’s and uses its CHEVRON mark, which dates back to 1935 (see U.S. Reg. 364,683) in all aspects of its business as illustrated on the company’s website at <chevron.com>, the home page of which currently appears as follows:
<redacted image>
Also, at the website that resolves from Complainant’s <chevroncreditcard.com> domain name, Complainant advertises and offers credit card services in connection with its CHEVRON mark, as illustrated below: <images redacted>
The CHEVRON mark appears prominently in Complainant’s advertising and promotional materials, including but not limited to newspapers, magazines and television, which Complainant places at a cost of tens of millions of dollars per year. Complainant also has an active presence on the Internet, where it interacts with consumers and the general public at websites including <chevron.com>, <chevroncreditcard.com>, and others. Complainant also provides information about career opportunities within the company, as depicted below and at http://careers.chevron.com/: <images redacted>
B. Registration of Disputed Domain Names
The disputed domain names were registered on March 7, 2014.
C. Use of Disputed Domain Names
Just prior to the filing of this Complaint, all of the disputed domain names were being used to resolve to nearly identical portal pages. As shown below, the landing pages for chevronna.com, chevronna.net domain names contained active links that relate to credit card services, including the credit card services and energy-related business of Complainant that it provides under the CHEVRON name and brand and the landing pages for chevronnorthamerica.com and chevronnorthamerica.net currently contain active links related to Complainant’s energy and credit card services.
Specifically, the domain chevronna.com contained links to “Chevron,” “Chevron San Ramon,” “Chevron Gas Card,” “Chevron Oil and Gas,” “Chevron Credit Union,” and “Jobs at Chevron.”
The website for the domain chevronna.net contained links for direct competitors of Complainant, including “Shell Gas Card,” and “Hess Gas Card.”[1]
The website for the domain chevronnorthamerica.com contains links to “Chevron San Ramon,” “Chevron Credit Union,” “Chevron Texaco Card,” “Chevron Oil and Gas,” among others.
Lastly, the fourth domain for chevronnorthamerica.net is a landing page with identical images to the other three, including Chevron-related links.
The links on the landing pages for all of the domains provided or currently provide sponsored listings to third party credit card services, including for petroleum companies that are related to, and directly competitive with the credit card services and energy-related business of Complainant.
Complainant has not authorized this use of its CHEVRON marks, either as part of the Domain Names or as part of the content within the website.
Legal Basis for Complaint
Complainant is entitled to a transfer of the Domain Names because (1) the Domain Names are confusingly similar to Complainant’s famous mark; (2) Respondent has no rights or legitimate interests in the Domain Names; and (3) the Domain Names have been registered and are being used in bad faith.
A. Confusing Similarity
As a result of extensive use and advertising since 1935, CHEVRON is a “famous mark” within the meaning of U.S. and international trademark law. See Chevron Corp. v. Fenton, FA 0096465 (Nat. Arb. Forum Mar. 1, 2001) (recognizing CHEVRON as famous mark). Complainant also owns registrations for the CHEVRON mark with the U.S. Patent and Trademark Office, which issued as early as 1939 (U.S. Reg. 364,683). Thus, Complainant has rights in the CHEVRON mark that long predate Respondent’s registration of the Domain Names. See Chevron Texaco Corp. v. Domains a/k/a Best Domains, FA0137035 (Nat. Arb. Forum Jan. 20, 2003) (finding rights established in the CHEVRON mark through registration with the U.S. Patent and Trademark Office, other governmental organizations worldwide, and widespread, continuous use of the mark in commerce).
The Domain Names incorporate the CHEVRON mark in its entirety. The <chevronna.com> and <chevronna.net> domain names are identical to Complainant’s mark but for the addition of “na,” which is a common abbreviation for “North America.” The addition of “na” implies that the page relates to Complainant’s prominent business in North America. The addition of “na” does not in any sense differentiate the Domain Names from Complainant’s CHEVRON mark. Instead, it further reinforces and suggests a connection to Complainant because it is a direct reference to Complainant’s presence in North America. As demonstrated on the website for the chevronna.com domain, there was a link to “Chevron San Ramon.” Complainant’s headquarters are in San Ramon, California. In addition, one of Complainant’s subsidiaries is Chevron North America Exploration and Production Company, located in Texas. Clearly, the addition of “na” was meant to refer to Complainant’s presence in North America. See Caribbean Online Int’l Ltd., FA0833024 (finding that the addition of the term “credit cards” in <texacocreditcards.com> failed to distinguish the disputed domain name from the TEXACO mark because such terms were merely descriptive of an aspect of complainant’s business).
Indeed, Respondent has also registered the domains <chevronnorthamerica.com> and <chevronnorthamerica.net>, which also directly reference Complainant’s business, and subsidiary.
Further, “by including the…[gTLD] ‘.com’ [or .net], in its domain name[s], Respondent has not distinguished the disputed domain[s] because all domain names are required to have a top-level domain.” Chevron Intellectual Property LLC v. St. Kitts Registry, FA1080702 (Nat. Arb. Forum Nov. 16, 2007).
These facts are sufficient without more to establish confusing similarity under the UDRP. Magnum Piering, Inc. v. Mudjackers & Wilson, Case No. D2001-1525 (WIPO Feb. 1, 2007) (noting that confusing similarity under Policy paragraph 4(a)(i) is evaluated based on a comparison of complainant’s mark and the domain name alone); Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“As numerous prior panels have held, the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy….”).
B. Rights or Legitimate Interests
Under Paragraph 4(a)(ii) of the UDRP and Rule 3(b)(ix)(2), a right or legitimate interest in the Domain Names may be negated by a showing that (i) Respondent's use of, or demonstrable preparations to use, the Domain Names have not been in connection with a bona fide offering of goods or services; (ii) Respondent (as an individual, business, or other organization) is neither commonly known by the Domain Names nor has Respondent acquired trademark or service mark rights in the Domain Names; and/or (iii) Respondent has not made any legitimate non-commercial or fair uses of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s mark.
Respondent has no rights or legitimate interests in the name “Chevron” and no authorization, consent or approval to use Complainant’s mark. The Whois records list Respondent as Harry Blazer. Respondent is not commonly known by any of its Domain Names or the name “Chevron”. “Prior panels have found that Respondent is not commonly known by a disputed domain name where no evidence in the record indicates that [Respondent] is known by the domain name and Complainant has not authorized Respondent to use the mark in a domain name.” Lorillard Licensing Co. v. domain admin, FA1500465 (Nat. Arb. Forum June 15, 2013).
Further, from the webpage content the Respondent created at each domain, it is clear that Respondent is trying to monetize references to Complainant. Respondent is not using the Domain Names in connection with any bona fide offering of goods or services or any non-commercial or fair use. The Respondent uses or has recently used the Domain Names to resolve to customized pages that promote links to the same services and business of Complainant and even uses Complainant’s name and famous marks. Specifically, the links to “Chevron San Ramon” or “Chevron Gas Station” or “Chevron Credit Card” may well cause consumers to select that link thinking they have accessed a legitimate site sponsored by Complainant and further are accessing another legitimate, sponsored site by Complainant; and the link to “Jobs at Chevron” found on chevronna.com may lead users to think they are applying for a job with Complainant. Such links and advertisements, are clearly intended to generate “click-through” fees from users looking for Chevron web page(s), and evidence Respondent’s bad faith intent to use the Domain Names to misleadingly to divert consumers for commercial gain. Panels have held that the use of a disputed domain name in connection with a parked webpage, for the purpose of promoting hyperlink advertisements to competing and/or related goods and services, does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate non-commercial or fair use under Policy ¶4(c)(iii). See Chevron Intellectual Property LLC v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, FA1080422 (Nat. Arb. Forum Nov. 6, 2007) (finding no bona fide offering of goods or services or legitimate non-commercial or fair use where the disputed domain name resolved to a website displaying links to other, competing commercial websites); see also Ecolab Inc. v. Tabibi, FA1181839 (Nat. Arb. Forum June 16, 2008) (finding respondent responsible for the content of GoDaddy.com parking pages that linked to competing websites, and finding that such use did not constitute a bona fide offering of goods or services or legitimate non-commercial or fair use). All of the domain names were registered at the same time, share the same ownership and all incorporate the Complainant’s CHEVRON mark. Respondent has clearly shown an intent to trade upon the goodwill associated with Complainant’s CHEVRON marks in order to generate click-through revenue from all four names, and should not be permitted to operate any domains containing this mark.
Finally, Respondent’s use of the Domain Names cannot be considered a fair use of the term “Chevron” because Respondent’s use of the individual Domain Names is not connected to the dictionary definition of that term, and for three of the Domain Names being challenged herein, is instead, targeted to the Complainant’s business and credit card services. Thus, Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b) of the Policy, the following circumstances may constitute evidence of use and registration in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Names; or
(ii) Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
At a minimum, Respondent is in violation of subparagraphs (iii) and (iv) above because there is no colorable rationale for use and registration of the Domain Names other than to 1) cause Internet users to think they are accessing a website associated with Complainant, or 2) attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s CHEVRON mark. “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.” Mahindra & Mahindra Ltd. v. Pace, D2011-2189 (WIPO Feb. 19, 2012); see Chevron Intellectual Property LLC v. None, None, FA1504045 (Nat. Arb. Forum Jul. 7, 2013) (“the CHEVRON mark is famous enough in the eyes of consumers so as to suggest that Respondent had actual knowledge of the CHEVRON mark in registering the domain name, and thus registered the domain name in bad faith under Policy ¶4(a)(iii).”).
Here, the Respondent registered four Domain Names that are virtually identical to Complainant’s famous mark. Respondent’s addition of the descriptive term “na” or “north America” to the chevron domain name further implies that the associated webpage and website are connected with, if not owned by, Complainant. The use of the Domain Names by Respondent, who has no connection with Complainant, suggests 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.”).
The fact that Respondent registered four separate domain names containing Complainant’s famous mark, and has used all of the Domain Names to provide sponsored listings to links that refer to Complaint’s business or services or to Complainant’s competitors, strongly suggests that Respondent had actual knowledge of Complainant’s mark and has registered, and is using the Domain Names, in bad faith. See Michelin North America, Inc. v. innis, FA1511296 (Nat. Arb. Forum Aug. 28, 2013) (holding that respondent’s registration of domain names that were confusingly similar to complainant’s famous marks evidenced that respondent had actual knowledge of complainant’s marks and rights and registered the domain names in bad faith under Policy ¶4(a)(iii)); see also Elizabeth Taylor Trust, FA1513436 (“actual knowledge is adequate evidence of bad faith”).
Further, Respondent’s calculated use of the Domain Names strongly suggests that Respondent seeks to attract Internet users to its website by intentionally creating confusion as to whether the resolving pages, or the credit card services advertised, are offered by or affiliated with the Complainant. see W.W. Grainger, Inc. v. Millikan, FA1512400 (Nat. Arb. Forum Sept. 4, 2013).
Respondent’s use of the Domain Names to divert Internet users seeking Complainant’s website, products and services also is disruptive to Complainant’s business and is further evidence of bad faith registration and use under Policy ¶4(b)(iii). See Ecolab Inc. v. Tabibi, FA1181839 (Nat. Arb. Forum June 16, 2008) (finding respondent’s use of the disputed domain names to resolve to parked GoDaddy webpages promoting links to competing businesses was capable of disrupting Complainant’s business and evidenced bad faith under Policy ¶4(b)(iii)).
Accordingly, Respondent has registered and is using the Domain Names in bad faith.
B. Respondent
1. Blazer registered the Domain Names in Dispute in connection with legitimate business operations related to racing cars manufactured by Chevron Cars Limited.
2. Chevron racing cars have been in existence since 1965.
3. The manufacturers, distributors and dealers of Chevron racing cars maintain and have maintained for decades several domain names that include the name “Chevron”, including without limitation <chevronracingcars.com>.
4. Chevron Corp., Chevron IP or an affiliate has set up energy operations in the jurisdiction where Chevron racing cars are built under the name Chevron Products and sold motor oil under the Texaco brand there.
5. Chevron racing cars did not attempt to bully Chevron Corp. or its affiliate(s) into relinquishing the use of the name “Chevron” in their own backyard.
6. Chevron racing cars does not sell energy.
7. Neither Chevron Corp nor Chevron IP manufacturers or sells racing cars.
8. A review of US Patent and Trademark Office website revealed one trademark owned by Chevron Corp. or Chevron IP in connection with cars. This Mark “The Chevron Cars” is used in connection with Trademark International Class 25 for clothing and Trademark International Class 28 for card games, computer game software and toy vehicles. This Mark is not used in connection with the manufacturer or sales of racing cars for use on speedways.
9. Therefore, neither Chevron Corp. nor Chevron IP has any legitimate right to prevent Mr. Blazer from using the Domain Names in Dispute.
10. In addition, there appears to be no prior registration of the Domain Names in Dispute by either Chevron Corp. or Chevron IP.
11. The hosting company for the Domain Names in Dispute did not obtain the consent or approval of Mr. Blazer before they pointed the Domain Names in Dispute to provide free advertising or click-thrus for Chevron Corp. in San Ramon, Texas. None of the content currently displayed on the Domain Names in Dispute was created by Mr. Blazer, nor is he or can he be held in anyway responsible or liable for the content.
12. The Domain Names in Dispute are parked for construction as Complainant is well aware despite its accusations to the contrary. Chevron Corp. and Chevron IP are mischaracterizing the facts in a blatant, bizarre and offensive attempt to mislead the Panel into ruling that the content of the hosting company or of Complainant itself appearing on the Domain Names in Dispute is the responsibility of Mr. Blazer. However, this is not the first time that Chevron Corp. has seen a hosting page. Each page states on its face “Coming Soon! Why am I seeing this ‘Under Construction’ page?” The Panel can assume that Complainant does in fact know that hosting companies are well known for pointing pages to content they determine will be helpful to the user without anyone’s consent or knowledge. In addition, the click-thru advertising complained of is Complainant’s own advertising! How can they complain about Respondent who has placed absolutely no content on the sites when Complainant is the source of their own click-thru advertising that has been improperly placed on Respondent’s sites. Chevron Corp. has revealed its bad faith and unclean hands. If the question of the “content” on the Domain Names in Dispute was really an issue for Complainant, Chevron Corp. could have addressed their complaint about the “content” of the site being pointed to their website directly, quickly and effectively by attacking the hosting company or by removing its own click-thru advertising from squatting on Respondent’s sites.
13. It is absurd and materially misleading for Chevron Corp. or Chevron IP to argue that the free advertising provided by the hosting company without Mr. Blazer’s prior knowledge or consent or Complainant’s own click-thru advertising is either harmful to them or somehow the fault of Mr. Blazer.
14. Neither Chevron Corp. nor Chevron IP has provided one shred of evidence that there is anyway for Mr. Blazer to profit from the free advertising donated by the hosting company to the Complainant or from Complainant’s own click-thru advertising that squats on Respondent’s sites or otherwise.
15. Mr. Blazer has not in fact profited from any advertising located on the Domain Names in Dispute sites.
16. Chevron’s Corp’s wild and unfounded allegations that Mr. Blazer could somehow receive click-thru fees from Complainant’s own click-thru advertising or from the free advertising for the Complainant that the hosting company has provided at Mr. Blazer’s domain names clearly demonstrates the true bad faith, cyber-bullying and harassing intent of this Complaint. It is plainly evident from the face of each page located under the Domain Names Under Dispute that each page is “Under Construction.” There are no links that click-thru to Mr. Blazer. On the other hand, there are links that click-thru to Chevron Corp. or their affiliates for their benefit. Chevron Corp. is squatting on Respondent’s sites using their own click-thru advertising. If there are any click-thru fees to be had it is Chevron Corp. who is benefitting and not Mr. Blazer. Consequently, Chevron Corp.’s argument is fallacious, deceptive and deeply troubling. Complainant has placed their own click thru adds on Respondent’s parked page that is Under Construction, without Respondent’s permission, and now dares to complain of its own advertising blaming Respondent for it! If Complainant does not want its click-thru advertising placed on Respondent’s parked sites, then the Forum should order Complainant to immediately remove its click-thru advertising from all of Respondent’s sites.
17. To the extent that the domain names that Mr. Blazer created and purchased are being used without his consent, approval or prior knowledge while Under Construction to advertise Chevron, San Ramon, Texas or its affiliates with click-thrus to Chevron Corp.’s benefit but with no benefit to Mr. Blazer, Complainant’s complaint is mis-directed at Mr. Blazer. Complainant could better address its complaint to the originator and author of the advertising, who is not Mr. Blazer.
18. There is no or a minimal likelihood of confusion between Chevron racing cars and Chevron Corp. or Chevron IP. If anything, the relationship has the potential to become symbiotic. Chevron racing cars use fuel in order to operate. Chevron Corp. sells fuel.
19. Mr. Blazer has evidenced no intent to trade upon the name Chevron Corp. To the contrary, by squatting on Mr. Blazer’s sites with its own click-thru advertising Complainant has evidenced its intent to trade upon Mr. Blazer’s sites improperly. The Panel should order Complainant to remove all of its advertising from the Domain Names in Dispute.
20. Contrary to the Complaint, Respondent is not in violation of paragraph 4(b) of ICANN’s Uniform Domain Dispute Resolution Policy (the “Policy”).
21. With respect to section (i) of paragraph 4(b) of the Policy, Respondent has registered the domain name without any intent of transferring the domain name to Complainant or to a competitor of Complainant. In addition, Complainant has made no allegation that any such sale, lease or transfer has been attempted or even contemplated.
22. With respect to section (ii) of paragraph 4(b) of the Policy, Respondent has no pattern of conduct of preventing the owners of trademarks from registering domain names. The Domain Names In Dispute were available having not been previously registered by anyone, including Complainant, and were desired and registered for legitimate business interests.
23. With respect to section (iii) of paragraph 4(b) of the Policy, Respondent has not registered the Domain Names in Dispute for the purpose of disrupting the business of a competitor. First of all, the content on the sites is not Mr. Blazer’s as the sites are parked for construction. Secondly, the content on the sites relating to Complainant was placed there by Complainant itself in its own click-thru ads. Complainant is barred from placing its own click-thru ads on Respondent’s Domain Names in Dispute and then complaining that Complainant’s own actions in so doing are the reason that Respondent is disrupting Complainant’s business. Third, Respondent and Complainant are not competitors. They operate in completely separate trademark classifications and business lines.
24. With respect to section (iv) of paragraph 4(b) of the Policy, Respondent has not created a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Again, there is no content on the Domain Names in Dispute that was placed there by Mr. Blazer or at his behest. Any likelihood of confusion with Complainant was Complainant’s own doing. Complainant is the party who placed their click-thru advertising on Respondent’s sites. This further demonstrates Complainant’s absolute bad faith in filing this Complaint. There is absolutely no content on any of the sites that attracts any user to Mr. Blazer or to his website or that causes any kind of gain whatsoever to accrue to Mr. Blazer. As between Complainant and Respondent, the party who is benefiting from Mr. Blazer’s sites is Complainant. If anything, Internet users are being diverted from Mr. Blazer to Complainant because of Complainant’s click-thru advertising that Complainant has caused to squat on Mr. Blazer’s domain names.
25. As set forth in this Response, Complainant has repeatedly evidenced its bad faith in filing this Complaint.
26. Complainant must be ordered to remove its click-thru advertising from Respondent’s Domain Names in Dispute.
C. Additional Submissions
Respondent Harry Blazer offers two general principles in its Response to the UDRP Complaint, namely, that 1) he should not be responsible for the content of the websites connected to the Domain Names he owns, and that 2) Complainant somehow acquired access to his websites and is “squatting” on them to include references to Complainant, its business and its competitors. Both positions are flatly wrong and the Domain Names should be transferred to Complainant.
I. Respondent Is Responsible for the Content His Domain Names Point To
The Response to UDRP Complaint erroneously attempts to shift the responsibility for the content of the websites to first the Registrar, then to the Complainant. This position is wholly without merit. Respondent is responsible for the content of the websites that his Domain Names resolve to. Ecolab Inc. v. Alexander Tabibi, FA0804001181839 (Nat. Arb. Forum, June 16, 2008) (Respondent argued that it was not responsible for linking its Domain Names to third party sellers of products related to Complainant because he had no control over the parked websites. Notwithstanding this argument, the Forum held that Respondent was responsible and had no rights or legitimate interests in the Domain Names); see also St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (Respondent is ultimately responsible for how a domain name is used).
Moreover, Respondent’s allegations that he has not profited from the advertisements placed on his own websites is of no consequence. The absence of any revenue received by Respondent for the advertising links does not “demonstrate absence of intent to use a domain name for commercial gain.” See AOL LLC v. Fry, FA0711001112246 (Nat. Arb. Forum, Jan. 21, 2008)(the Forum held that “[b]y selecting [the registrar] as his registrar and allowing it to connect the domain name to a parking page where advertising [was] selected according to a program….designed to produce advertisements having some connection with the ideas conveyed by the domain name, Respondent must be held responsible for those advertisements, even though he did not select them himself, and to have intended, by his acquiescence in the arrangement, to obtain for himself a share of any revenues thereby generated.”)(emphasis added).
Even if the Respondent did not intend to use the websites located at the Domain Names to provide links to website related to Complainant or Complainant’s competitors (which Complainant disputes), he remains responsible for the content of the websites. Id. (“The panel is therefore not persuaded that the use of the domain name to lead to parking pages was without intent on the part of Respondent, for commercial gain, misleadingly to divert consumers”).
II. Complainant Has Not Placed Any Advertisements or Other Content on the Domain Names
Respondent’s most incredulous argument is that Complainant is somehow responsible for the content found on Respondent’s own websites. Complainant has never had access to the Domain Names or associated websites, is not affiliated with the registrar of the Domain Names, and has never posted any links or advertisements on the websites located at the Domain Names.
III. Respondent Has Not Demonstrated That He Has Legitimate Rights to Use of CHEVRON NA, or CHEVRON NORTH AMERICA
Lastly, Respondent has not offered evidence that he has rights or legitimate interests to the use of CHEVRON, CHEVRON NA or CHEVRON NORTH AMERICA. Respondent has identified what appears to be a UK-based company, called “Chevron Cars Limited” which apparently manufactures custom racing cars exclusively in Cheshire, England and races them in the British GT, Britcar and GT Cup championships series (see: http://www.chevrongtcars.com/chevron-cars-racing-team/). But Respondent has not explained how he (with an address located in Montana) is connected with this company, the nature of the “legitimate business operations” between Respondent and this UK entity, how he has rights to the mark CHEVRON, how long he has had any alleged rights to CHEVRON, or why a UK-based company has interest in four Domain Names containing “NA” or “NorthAmerica” as part of the Domain Names. (A search of the U.S. Patent and Trademark Office records does not show any trademark applications or registrations in the name of Chevron Cars Limited. Over 20 years ago, a Harry A. Blazer was associated with a trademark application for CRISPITOS that did not register and was abandoned in 1994.) Indeed, none of the websites located at the Domain Names contain any reference to Chevron Cars Limited, their products or services, or generally had anything to do with auto racing or racing in Europe.
Instead, Respondent has offered an invoice for purchase of car parts and redacted emails that do not explain the relationship or how Mr. Blazer has actual rights to the CHEVRON name. Respondent has not offered any reason as to why he sought registration of Domain Names that contain Complainant’s name “Chevron”, do not contain “Cars” or even “Limited”, and link to websites and content that are for Complainant’s exact line of business. See Ecolab Inc. v. Alexander Tabibi, FA0804001181839 (Nat. Arb. Forum, 2008).
To the extent that Respondent argues that there is no likelihood that consumers will be confused between Complainant’s use of its CHEVRON mark in the U.S. and the mere existence of Chevron Cars in the UK, it clearly misses the point. As noted, the websites located at the Domain Names do not mention Chevron Cars. Any visitor to the Domain Names will see references to Complainant and Complainant’s competitors and will mistakenly associate these Domain Names with Complainant. Respondent continues to offer links to Complainant and Complainant’s competitors within the websites:
<chevronnorthamerica.com>, visited October 6, 2014.
Based on the foregoing, and the facts contained in the UDRP Complaint, Complainant respectfully requests that the Domain Names be transferred to Complainant.
(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.
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.
Complainant uses the CHEVRON mark is used in connection with its oil and gas services. The CHEVRON mark was registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 364,683 registered Feb. 14, 1939). Such registration is sufficient evidence of Complainant’s rights in the mark for Policy ¶4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant claims the <chevronna.com>, <chevronna.net>, <chevronnorthamerica.com>, and <chevronnorthamerica.net> domain names add geographic descriptors and the generic top-level domain “.com” to the CHEVRON mark. The Panel agrees with this characterization. In each case, various descriptors of the North American continent are added to the CHEVRON mark (e.g., “na” being abbreviated from North America). Such minor changes are insufficient to prevent a finding of confusing similarity under Policy ¶4(a)(i). See, e.g., Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar.").
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
First, Complainant claims Respondent has never been commonly known by these disputed domain names. Based upon the evidence Respondent submitted, this is true. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record). Respondent has no rights under Policy ¶4(c)(ii).
There is no doubt “Drive for Success” (later referred to as “Drive for Success LLC”) has purchased parts from Jordan Racing Ltd-Chevron Cars in England. Respondent has not explained what relationship he has with “Drive for Success.” It is very possible Respondent owns “Drive for Success” (and it is a limited liability company, so it is a separate entity). However, Respondent has not said he owns it and Respondent has not presented any evidence “Drive for Success” has authorized him to represent their interests. While it is very common for businessmen to register domain names in the wrong entity (such as Respondent may have done in this case), that can have very drastic consequences in a Proceeding. It is not this Panel’s place to correct Respondent’s registration error.
The exchange of emails which Respondent submits refer to racing Jordan Racing Ltd-Chevron Cars. There is nothing which shows any kind of a business arrangement (such as a distributorship) between Respondent and Jordan Racing Ltd-Chevron Cars. Once more, Respondent has not demonstrated any rights in the disputed domain names.
Assuming arguendo Respondent was the alter ego of “Drive for Success” (something this Panel is loathe to do), there is nothing in the record which indicates Jordan Racing Ltd-Chevron Cars has licensed Respondent to use its mark or to act on their behalf. While someone else may have rights to the Chevron mark (or a derivation thereof), that does not mean RESPONDENT has rights, see Mattel, Inc. v. KPF, Inc. FA0403000244073 (April 26, 2004). Respondent can only assert his own rights.
Respondent has made no showing of his demonstrable preparations to use the domain name (or a name corresponding to the domain name) in connection with a bona fide offering of goods or services before this Proceeding began, Policy ¶4(c)(i). Respondent registered the disputed domain names on March 7, 2014. What has Respondent done with the domain names, other than parking them? Apparently nothing. That doesn’t constitute demonstrable preparations within the meaning of Policy ¶4(c)(i).
Respondent uses the domain name to promote CHEVRON-related offers. The domain names resolve to a parked website featuring CHEVRON-based hyperlinks. While Respondent claims not to be responsible for the content of these parking pages, this Panel disagrees. As the owner of the domain name, only Respondent can control what content appears on the associated web site. Almost certainly Respondent picked a web hosting company that offers free parking in exchange for allowing ads on the parking page. Perhaps Respondent didn’t understand he was allowing this. Once again, that is Respondent’s issue and not the Panel’s issue.
It is well settled allowing these types of ads to appear on the disputed domain names websites is evidence there is no Policy ¶4(c)(i) bona fide offering, or Policy ¶4(c)(iii) legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)); Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”); Baylor Univ. v. Red Hot Web Gems, Inc., FA 1082178 (Nat. Arb. Forum Dec. 3, 2007) (finding that, even though a respondent does not receive any revenue from the hyperlinks displayed on the website and that the revenues are received by the parking service, a respondent still registered and used the domain name in bad faith because a respondent still allowed the parking service to access the domain name, instead of resolving the webpage to a blank page).
Respondent’s rather shrill claim Complainant is responsible for these ads is not credible. If Respondent (and his counsel) does not understand how a dynamic parking page works, this decision will likely be incomprehensible to them.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant’s business is disrupted by this use of the domain names for ads. The domain names include advertisements that promote CHEVRON-related goods (and for competitive goods not related to Chevron). These offerings are sufficiently disruptive to find bad faith registration and use within the meaning of Policy ¶4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶4(b)(iii)).
Complainant claims Respondent is profiting through the likelihood Internet users will be confused as to Complainant’s affiliation with these domain names. The domain names resolve to websites promoting CHEVRON related services (and competing non-Chevron related services). This constitutes bad faith registration and use in violation of Policy ¶4(b)(iv).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <chevronna.com>, <chevronna.net>, <chevronnorthamerica.com>, and <chevronnorthamerica.net> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, November 4, 2014
[1] Complainant notes that the day it filed this Complaint, the “related links” listed on chevronna.com, and chevronna.net switched to car-related links.
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