Phillips 66 Company v. Tim Taylor
Claim Number: FA1602001659658
Complainant is Phillips 66 Company (“Complainant”), represented by Steven M. Espenshade of Pirkey Barber PLLC, Texas, USA. Respondent is Tim Taylor (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <philips66.org>, registered with GoDaddy.com, LLC.
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 Forum electronically on February 5, 2016; the Forum received payment on February 5, 2016.
On February 5, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <philips66.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 February 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 29, 2016 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@philips66.org. Also on February 8, 2016, 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 March 2, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant has rights in the PHILLIPS 66 mark through registration of the mark with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 255,501, registered April 23, 1929).
Respondent’s disputed domain name, <philips66.org>, is confusingly similar to Complainant’s PHILLIPS 66 mark because the domain only differs through the removal of the letter “L” in the word “Phillips” and through the addition of the generic top-level domain (“gTLD) “.com.” The addition of a gTLD and deletion of a singular letter do not present an impression distinct from Complainant’s PHILLIPS 66 mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the domain name, nor licensed or in any manner permitted to use Complainant’s PHILLIPS 66 mark. Respondent has not used, nor made any demonstrable preparations to use the domain name. The disputed domain name currently resolves to an inactive webpage, with a generic “error” message. Additionally, Respondent has used emails associated with the domain to pose as an employee of Complainant and contact Complainant’s suppliers; presumably for commercial gain. Such use cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent has been involved in a multiple previous adverse UDRP decisions. Respondent’s use of fraudulent email accounts to contact Complainant’s suppliers shows that Respondent intended to compete and disrupt Complainant’s business. Respondent is typosquatting in bad faith. Finally, it is clear from Respondent’s use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the PHILLIPS 66 mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the PHILLIPS 66 mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent used the at-issue domain name to support email address at the domain name. The domain name is otherwise inactive.
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(f), 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’s registration of the PHILLIPS 66 mark with multiple international trademark authorities including the USPTO is more than sufficient to establish its rights in a mark under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Respondent’s <philips66.org> domain name contains Complainant’s entire PHILLIPS 66 trademark less an “l” and less its space, with the top-level domain name “.org” appended to the resulting string. The removal of the “l” and space between the terms in Complainant’s mark and the addition of the top-level domain name do not distinguish the at-issue domain name from the Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s PHILLIPS 66 mark pursuant to Policy ¶ 4(a)(i). See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also, Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
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 Taylor” 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 has failed to make any active use of the at-issue domain name for the purpose of addressing a website. However, the domain name is being used to support one or more email addresses which Respondent uses to impersonate Complainant. By using the domain name in this manner Respondent is neither making a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also, Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed 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 pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) circumstance are present as well as other circumstances which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent’s use of email @philips66.org to contact Complainant’s suppliers shows that Respondent intended to disrupt and compete with Complainant’s business and therefore demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii). See, Phillips 66 Company v. VistaPrint Technologies Ltd (bad faith found where Respondent used the “disputed domain name to send fraudulent emails to Complainant’s suppliers while posing as Complainant”); see also, Phillips 66 Company v. Brad Williams (bad faith found where Respondent was using email address incorporating disputed domain name “to fraudulently obtain goods from third party companies using the Complainant's mark. The Respondent is clearly passing itself off as the Complainant for this purpose.”);
Second, Respondent’s multiple adverse prior UDRP decisions indicates a malignant pattern of domain name abuse and suggests bad faith under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (stating “These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”); see also, Fair Isaac Corporation v. Zhichao Yang, FA 1582275 (Nat. Arb. Forum June 28, 2014) (decided against Respondent on similar facts). Respondent’s pattern of cybersquatting suggests Respondent’s bad faith in the instant case.
Third, Respondent’s <philips66.org> domain name exemplifies typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that Internet users will inadvertently type the malformed string when searching for products or services associated with the targeted trademark or will otherwise confuse the misspelled trademark laden domain name with a targeted trademark. In our case, Respondent uses the confusingly similar domain name as an email address so that recipients of Respondent’s email might erroneously believe that Respondent is associated with Complainant. As discussed above regarding Policy ¶ 4(a)(i), Respondent simply deletes a single character from Complainant’s trademark to form the second level of the confusingly similar <philips66.org> domain name. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered the <philips66.org> domain names knowing that Complainant has trademark rights in PHILLIPS 66. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of email addresses @philips66.org to send email having content overtly suggesting their author is associated with Complainant. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the at-issue domain name in bad faith pursuant to 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 <philips66.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 3, 2016
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