Chevron Intellectual Property LLC v. CHEVRON NIGERIA LIMITED
Claim Number: FA1508001633963
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, Washington, D.C., USA. Respondent is CHEVRON NIGERIA LIMITED (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chevron-nig.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 19, 2015; the Forum received payment on August 19, 2015.
On August 19, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <chevron-nig.net> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 2015 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@chevron-nig.net. Also on August 20, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 states that it is one of the world’s leading integrated energy companies, and owns the CHEVRON mark through its registration in the USA dating back to 1936. The mark is also registered in numerous other countries, including Nigeria. Complainant uses its mark in all facets of the global energy industry, including, but not limited to, research, exploration, production, and transportation fuels and lubricants. The mark is famous around the world.
Complainant alleges that the disputed domain name domain name is confusingly similar to its mark. The domain name incorporates the CHEVRON mark, inserts a hyphen, adds the term “nig” which is an abbreviation for Nigeria, and includes the generic top-level domain (“gTLD”) “.net.” Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name or the CHEVRON mark, nor does Respondent have authorization, consent, or approval from Complainant. Respondent is not commonly known by the disputed domain name, as Respondent’s WHOIS information is false, and the disputed domain name is not owned or controlled by Complainant. Further, the disputed domain name is not being used for a bona fide offering of goods or services or a legitimate non-commercial or fair use. Respondent uses the disputed domain name as an integral part of a fraudulent scheme for sending false, unauthorized, business-related solicitations to third parties, and which falsely claim to be in and under the name of Complaint’s related company. In particular, Respondent uses e-mail address connected to the disputed domain name to solicit information and money, posing as one of Complainant’s Nigeria subsidiaries. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent has registered and is using the disputed domain name in bad faith. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of Complainant. Further, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s online location by creating a likelihood of confusion with Complainant’s mark. Additionally, Respondent had actual knowledge of Complainant’s mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark CHEVRON dating back to 1936. The mark is famous around the world.
Respondent has provided incorrect WHOIS information, pretending that it is a subsidiary of Complainant when it is not.
Respondent uses e-mail address connected to the disputed domain name to solicit information and money, posing as one of Complainant’s Nigerian subsidiaries.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark. The domain name incorporates the CHEVRON mark, inserts a hyphen, adds the term “nig” which is an abbreviation for Nigeria, and includes the gTLD “.net.” Past panels have viewed that addition of a hyphen as insignificant to the analysis of confusing similarity. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Further, previous panels have concluded that the addition of a generic term or geographic modifier does not sufficiently differentiate the disputed domain name from the mark. See Expedia, Inc. v. Mandanice, FA 146598 (Nat. Arb. Forum Apr. 7, 2003) (finding that the <expedia-uk.com> domain name was confusingly similar to the complainant’s EXPEDIA mark). Finally, panelists have agreed that the addition of a gTLD does not serve to adequately distinguish the disputed domain name from the registered mark. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
The WHOIS information for the disputed domain name lists “Chevron Nigeria Limited” as the registrant of record for the disputed domain name, and lists an address that copies Complainant’s own address for its operations in Nigeria. This information is false, because Respondent is not associated with Complainant and Complainant has not licensed, or otherwise authorized it to use its mark or address. Prior panels have found that a there are no rights or legitimate interests in such situations, see Kmart of Mich., Inc. v. Cone, FA655014 (Nat. Arb. Forum April 25, 2006) (The panel held that respondent’s attempt to pass itself off as the complainant was not a bona fide offering of goods or services or a legitimate noncommericial or fair use).
Further, the disputed domain name is not being used for a bona fide offering of goods or services or a legitimate non-commercial or fair use. Respondent uses e-mail address connected to the disputed domain name to solicit information and money, posing as one of Complainant’s Nigerian subsidiaries. Prior panels have held that the use of an e-mail address containing the disputed domain name for the purpose of passing oneself off as Complainant’s legitimate business 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 Tyco Int’l Services GmbH v. TYCOINT SCOT, FA 1590501 (Nat. Arb. Forum Dec. 22, 2014) (finding no rights or legitimate interests where the disputed domain name was used to impersonate the complainant in e-mail messages in connection with a fraudulent scheme aimed at the complainant’s customers); see also Chevron Intellectual Property LLC v .Richard Bailey / Jacobs, FA1588430 (Nat. Arb. Forum Dec. 9, 2014) (finding no bona fide offering of goods or services where the respondent’s use of the disputed domain name was in furtherance of fraudulent activity under the misleading guise of the domain name and associated email addresses); Coldwell Banker Real Estate LLC v. piperleffler piperleffler / null, FA1529565 (Nat. Arb. Forum Dec. 27, 2013) (finding no bona fide offering of goods or services or legitimate non-commercial or fair use where the disputed domain name was incorporated as an email address extension and used in part of respondent’s fraudulent scheme of posing as a representative of complainant); Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the contested domain name was registered and used in bad faith where the respondent hosted a website and passed itself off as the complainant in order to perpetrate a fraud on third parties).
The Panel finds that Complainant has satisfied its burden of proof for this element of the Policy.
As noted above, Respondent is using the disputed domain name to send e-mails that solicit information and money, posing as one of Complainant’s Nigeria subsidiaries. This disrupts Complainant’s business and constitutes bad faith registration and use under Policy ¶ 4(b)(iii). 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)).
Respondent causes e-mail users to think they are accessing e-mail contacts associated with Complainant for Respondent’s commercial gain. Thus Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s online location by creating a likelihood of confusion with Complainant’s mark in violation of Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
The Panel finds that Complainant has discharged its burden of proof for this element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chevron-nig.net> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: September 19, 2015
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