Exxon Mobil Corporation v. Daniel Klog / klog daniel
Claim Number: FA1606001680750
Complainant is Exxon Mobil Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Daniel Klog / klog daniel (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <exxonmobil-euro.com> and <exxonmobil-uk.com>, registered with Ligne Web Services SARL dba LWS and PDR Ltd. d/b/a PublicDomainRegistry.com, respectively.
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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2016; the Forum received payment on June 22, 2016.
On June 24, 2016, Ligne Web Services SARL dba LWS confirmed by e-mail to the Forum that the <exxonmobil-euro.com> domain name is registered with Ligne Web Services SARL dba LWS and that Respondent is the current registrant of the name. Ligne Web Services SARL dba LWS has verified that Respondent is bound by the Ligne Web Services SARL dba LWS 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 June 25, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <exxonmobil-uk.com> 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 the Policy.
On June 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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@exxonmobil-euro.com, and postmaster@exxonmobil-uk.com. Also on June 27, 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 July 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant is engaged in an industry comprised of multinational companies which market, sell, and distribute petroleum and chemical products and services. Complainant uses the EXXONMOBIL mark in connection with its business in this industry, and has registered the mark internationally and with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,510,978, registered Nov. 20, 2001). Complainant has rights in the mark, and the disputed domains are confusingly similar as the mark is incorporated entirely within both. The only alterations to the mark include hyphenation, followed by geographic elements—“euro” or “uk”—and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent is not commonly known by the disputed domains as the WHOIS lists “Daniel Klog as registrant of the domain names. Respondent has used the <exxonmobil-euro.com> domain to pass itself off as Complainant, while the <exxonmobil-uk.com> domain name is inactive. Therefore, no bona fide offering of goods or services or any legitimate noncommercial or fair use has been made through the disputed domains.
iii) Respondent registered both domain names within a short period of time, indicating bad faith registration and use under Policy ¶ 4(b)(ii). Next, Respondent’s passing off behavior through the <exxonmobil-euro.com> domain imputes bad faith under Policy ¶ 4(b)(iv). In addition, inactive holding of the <exxonmobil-uk.com> domain name leads to a nonexclusive bad faith outcome under Policy ¶ 4(a)(iii). Finally, the fame of the EXXONMOBIL mark, Respondent’s slavish imitation of Complainant’s online offerings through the <exxonmobil-euro.com> domain, the incorporation in full of the mark in both domains, and their temporal proximity in registration suggests that Respondent had actual knowledge of Complainant and the EXXONMOBIL mark when registering and using the disputed domains, such that further evidence of bad faith under Policy ¶ 4(a)(iii) is present.
B. Respondent
Respondent did not submit a Response in this proceeding. The Panel notes that the <exxonmobil-euro.com> and <exxonmobil-uk.com> domain names were registered on May 26, 2016 and April 11, 2016, respectively.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
(1) Preliminary Issue - Language of Proceedings
Complainant requests that the language of this administrative proceeding proceed in the English language. Complainant makes this request in light of the French language Registration Agreement associated with the <exxonmobil-euro.com> domain name for the following reasons:
i) with regard to <exxonmobil-uk.com>, the registration agreement is in English and the geographic term “UK” in the disputed domain suggests facility with the English language, and with regard to <exxonmobil-euro.com>, Respondent’s corresponding web site is wholly in English, and thus it is clear that Respondent has the ability to understand and communicate in English, and that conducting these proceedings in English will not prejudice Respondent;
ii) conducting these proceedings in a language other than English will cause Complainant to incur significant additional burden and delay to translate the Complaint and other documents; and
iii) the current proceeding will have to be divided if it cannot be conducted solely in English, resulting in additional burden and delay.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
(2) Preliminary Issue - Multiple Respondents
Complainant submits that these domains are owned by the same individual or entity for at least the following reasons:
i) the names Klog Daniel and Daniel Klog are inverted but otherwise identical;
ii) the domains have the same e-mail contact, danielklogg@gmail.com;
iii) the domains use the same Name Server, ORDERBOX-DNS.COM; and
iv) the disputed domains are similarly structured, each consisting of EXXONMOBIL, a dash, a geographic indication and the gTLD “.com.”
UDRP Rule 3(c) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds the relevant WHOIS information for the Respondents evinces identical contact information, imputing that the multiple Respondents in the instant proceeding are in fact one in the same, and thus the disputed domain names may be considered in one complaint.
(3) 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:
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 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 (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.”).
Complainant is engaged in an industry comprised of multinational companies which market, sell, and distribute petroleum and chemical products and services. Complainant claims it uses the EXXONMOBIL mark in connection with its business in this industry, and that it has registered the mark internationally and with the USPTO (Reg. No. 2,510,978, registered Nov. 20, 2001). Panels have agreed that valid trademark representations substantiate rights under the burden imposed by Policy ¶ 4(a)(i), such as in Morgan Stanley v. Adewale Sala, FA 869418 (Forum Jan. 29, 2007) (finding that because of “Complainant’s valid trademark registrations for the MORGAN STANEY mark with the USPTO and OHIM, Complainant has sufficiently demonstrated its rights in the mark pursuant to Policy.”). Accord Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, the Panel agrees that Complainant’s USPTO trademark registration constitutes rights in the EXXONMOBIL mark according to Policy ¶ 4(a)(i).
Complainant also argues that the disputed domains are confusingly similar as the mark is incorporated entirely within both. The only alterations to the mark include hyphenation, followed by geographic elements—“euro” or “uk”—and the generic top-level domain (“gTLD”) “.com.” According to the Panel in Microsoft Corp. v. The Private Whois Privacy Service, FA1302001484502 (Forum Mar. 24, 2013), “[The] addition of a hyphen or a top level domain name are never significant changes to a trademark under the Policy.” Further, geographic terms have been considered non-distinguishing features under Policy ¶ 4(a)(i). See generally Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). More specifically, the addition of “Europe” has been considered by a previous panel in The Royal Bank of Scotland Group plc and National Westminster Bank plc v. Jittla, FA 660550 (Forum May 2, 2006) (finding <rbs-europe.com> confusingly similar to RBS). And the “uk” geographic indicator has also been found to be an unsubstantial feature, as in Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark). The Panel rests on precedent and determines that there is an established modus operandi in which respondents register domains that fully incorporate the marks of complainants and simply add a hyphen, a geographic indicator, and a gTLD; and the instant Respondent is no exception. Therefore, the Panel concludes that the <exxonmobil-euro.com> and <exxonmobil-uk.com> domain names are confusingly similar to the EXXONMOBIL mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
Complainant argues that Respondent is not commonly known by the disputed domains as the WHOIS lists “Daniel Klog" and " Klog Daniel" as registrant of the domain names. Where no response is available, as is the case here, panels consider the WHOIS conclusive evidence when finding in favor of complainants under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). This Panel also concludes that Respondent is not commonly known by the disputed domains.
Next, Complainant argues that Respondent has used the <exxonmobil-euro.com> domain to pass itself off as Complainant. The Panel observes the Complainant's evidence for screenshots of the relevant web pages to which the disputed domain name <exxonmobil-euro.com> has resolved. Panels have seen instances where a respondent is clearly passing itself off as a complainant to indicate a lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) and (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself off as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). This panel agrees that Respondent’s use of the <exxonmobil-euro.com> domain name does not amount to a bona fide offering or a legitimate noncommercial or fair use.
Further, Complainant asserts that the <exxonmobil-uk.com> domain name is inactive by submitting evidence. Therefore, this Panel agrees that no bona fide offering of goods or services or any legitimate noncommercial or fair use has been made through either of the disputed domains. See Hewlett-Packard Co. v. Shemesh, FA 434145 (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).”).
Complainant argues that Respondent registered both domain names within a short period of time, indicating bad faith registration and use under Policy ¶ 4(b)(ii). While panels have found registration of multiple infringing domains in a single dispute bad faith under Policy ¶ 4(b)(ii) (see Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii))), this Panel agrees that Respondent’s registration and use of both the <exxonmobil-euro.com> and <exxonmobil-uk.com> domain names was in bad faith under Policy ¶ 4(b)(ii).
Next, Complainant argues that Respondent’s passing off behavior through the <exxonmobil-euro.com> domain imputes bad faith under Policy ¶ 4(b)(iv). The Panel recalls screenshots Complainant has attached as exhibits to its Complaint illuminating its argument. In H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003), the panel found 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 sees that precedent supports a finding of Policy ¶ 4(b)(iv) bad faith where Respondent has intended on passing itself online as Complainant—presumably for commercial gain. In addition, Complainant argues that inactive holding of the <exxonmobil-uk.com> domain name leads to a nonexclusive bad faith outcome under Policy ¶ 4(a)(iii). The Panel notes that a screenshot displaying the resolving page to <exxonmobil-uk.com> domain name which displays the following message: “This page can’t be displayed.”
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.). The particular circumstances of this case that the Panel has considered are:
i) the Complainant’s mark ‘’EXXONMOBIL" is considered as being a well-known and reputable trademark; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name <exxonmobil-uk.com>.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name <exxonmobil-uk.com> constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain names in bad faith.
Finally, Complainant urges that the fame of the EXXONMOBIL mark, Respondent’s slavish imitation of Complainant’s online offerings through the <exxonmobil-euro.com> domain, the incorporation in full of the mark in both domains, and their temporal proximity in registration suggests that Respondent had actual knowledge of Complainant and the EXXONMOBIL mark when registering and using the disputed domains, such that further evidence of bad faith under Policy ¶ 4(a)(iii) is present. Panels have agreed that the totality of the circumstances of a domain dispute may lead to a finding that a respondent was on actual notice of a complainant’s rights. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). The Panel infers, due to the fame of Complainant's mark and manner of use of the disputed domain names that Respondent had actual knowledge when registering and using the infringing domains and that bad faith under Policy ¶ 4(a)(iii) has been demonstrated.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <exxonmobil-euro.com> and <exxonmobil-uk.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 4, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page