Exxon Mobil Corporation v. Mohamed Salah
Claim Number: FA1703001720756
Complainant is Exxon Mobil Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Mohamed Salah (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xomoil.com>, registered with Domain.com, LLC.
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.
Dr. Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 8, 2017; the Forum received payment on March 8, 2017.
On March 9, 2017, Domain.com, LLC confirmed by e-mail to the Forum that the <xomoil.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the names. Domain.com, LLC has verified that Respondent is bound by the Domain.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 March 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2017 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@xomoil.com. Also on March 9, 2017, 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 March 28, 2017.
Additional Submission by the Complainant had been submitted on 29th of March 2017.
On April 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Beatrice Onica Jarka Here 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant contends that:
- It is the world’s largest publicly traded international oil and gas company and uses the stock symbol XOM to designate its company.
- It has common law rights to the XOM mark, as XOM has taken on a secondary meaning that is identified exclusively with Complainant. Complainant also has rights to the EXXON mark based upon registration with the trademark agencies of many countries around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 884,420, registered Jan. 20, 1970). See Compl.,
- the disputed domain name is confusingly similar to the EXXON mark, because XOM is phonetically similar in pronunciation to the EXXON mark, and also adds the descriptive term “oil” and the gTLD “.com.”
- Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Also, Respondent is not using the disputed domain name to make a bona fide offering of goods or services, or legitimate noncommercial or fair use.
- the disputed domain name resolves to a website which prominently uses and displays Complainant’s marks in an attempt to create a false image of association with Complainant.
- Respondent should be considered to have registered and used the disputed domain name in bad faith.
- On information and belief, Complainant argues that Respondent is the same party as a respondent in a previous UDRP action where the disputed domain name was ordered transferred.
- Respondent is using the resolving website to refer to the oil and lubricants business and displays Complainant’s marks and imitations of Complainant’s logos; all for commercial gain. Additionally, it is clear Respondent had actual knowledge of Complainant’s rights in the mark at the time it registered and used the disputed domain name.
B. Respondent, responds that:
- Respondent has registered “ExxonMobil Lubricants” as a trademark in Egypt.
- Respondent is legally working in the Egyptian market and has rights to its website.
C. Additional Submissions
By its additional submissions, Complainant further contends:
- Respondent has not disputed that the disputed domain name is confusingly similar to the XOM or EXXON trademarks.
- Respondent’s provided documentation has not provided any registration certificates for the EXXON or XOM marks, so the statement that it is using its registered trademarks that correspond with the disputed domain name is not supported by evidence.
- Further, Respondent is fraudulently holding itself out as being associated with Complainant and selling goods that are likely counterfeit, further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name.
- Additionally, sometime after the filing of the Complaint, Respondent stopped using the disputed domain name.
Complainant reiterates that Respondent is using the disputed domain name to falsely pass off as Complainant.
The Panel finds that the disputed domain name is confusingly similar to marks in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was 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 claims rights in the EXXON mark based upon registration of the mark with the USPTO (e.g. Reg. No. 884,420, registered Jan. 20, 1970). See Compl., at Attached Ex. D. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel therefore holds that Complainant’s registration of the EXXON mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant claims common law rights in the XOM mark. Complainant’s rights in the XOM mark are claimed dating back to December 1, 1999 on the basis that Complainant uses the mark as a stock symbol and an abbreviation for “ExxonMobil.” See Compl., at Attached Ex. F. Common law rights are typically found through a showing that a secondary meaning in the mark has been created in the minds of the public. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). A Google search for the term “XOM” yields results that almost exclusively refer to Complainant and XOM is listed in <dictionary.com> as denoting Complainant. See Compl., at Attached Ex. F. Although, traditionally, a secondary meaning is established by evidence of complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to complainant, this Panel concludes that Complainant might have established a secondary meaning in the XOM mark.
Complainant next claims Respondent’s <xomoil.com> is confusingly similar to the XOM mark, as it contains the mark in its entirety and merely differs through the addition of the descriptive term “oil” and the gTLD “.com.” The addition of a descriptive term and a gTLD does not distinguish a domain name from a mark. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). This Panel holds that the disputed domain name is confusing similar to the XOM mark per Policy ¶ 4(a)(i).
Complainant also claims, that Respondent’s <xomoil.com> is confusingly similar to Complainant’s EXXON mark, as the pronunciation of XOM (pronounced EX-AWM) is phonetically similar to that of the EXXON. The disputed domain name also adds the descriptive term “oil” and the gTLD “.com.” Use of a phonetically similar term to a mark may not distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). See Am. Online, Inc. v. Triple E Holdings Ltd., FA 281584 (Forum July 15, 2004) (“Words that are spelled differently but are phonetically similar do not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”). Also, the addition of a descriptive term and a gTLD does not distinguish a domain name from a mark. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
By its Response, Respondent contends that Respondent has registered “ExxonMobil Lubricants” as a trademark in Egypt and by registering the disputed domain name, Respondent uses the trademarks and brand of this company. In support of its contentions Respondent transmitted a series of documents, most in Arabic language, where the name of a company Exxon Mobil Co. Lubricants is mentioned. Nevertheless, as Complainant asserted in its additional submissions, Respondent has not provided any registration certificates for the EXXON or XOM marks or any connection between the name of the Registrant of the disputed domain name, Respondent in this case, and Exxon Mobil Co. Lubricants.
Moreover, Respondent makes no further contentions with regards to Policy ¶ 4(a)(i) in its Response and curiously enough, while asserting alleged rights in “ExxonMobil Lubricants as trademark and brand registers the disputed domain name to include not the said trademarks or brands but a very well-known stock symbol XOM of Complainant, in which Complainant asserts common law trademark rights.
Considering the above, this Panel concludes that Complainant succeeded to prove the first element as per Policy ¶ 4(a)(i), as the disputed domain name is confusingly similar to Complainant’s registered trademarks EXXON and its stock symbol, which might have acquired by time a secondary meaning as to Complainant’s designation.
In proving the element under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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 known by the disputed domain name, despite Respondent’s provision of documents that purport to grant Respondent an Egyptian trademark for “Exxon Mobil Lubricants Co.” WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record names Respondent as “Mohamed Salah.” Complainant points to a previous case with very similar facts—and, Complainant alleges, the same parties—where the respondent was found to not be commonly known by the disputed domain name despite claiming to have a business license for “Exxon Mobile Lubricants Co.” in Egypt and the United Arab Emirates. See Exxon Mobil Corporation v. newatlas/newatlas c/o salah elsokary/c/o exxonmobilemirates.net, FA 1401904 (Forum Aug. 18, 2011). Thus, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant claims that Respondent’s lack of rights and legitimate interests in <xomoil.com> is further evident through its failure to use the disputed domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). Instead, Respondent attempts to pass off as Complainant and offer potentially counterfeit products. Such behavior does not amount to a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of 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 of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”). Complainant points to Respondent’s prominent and persistent use of Complainant’s marks on Respondent’s website and in its purported business name. See Compl., at Attached Ex. G. The Panel, therefore, finds Respondent lo lack rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent’s lack of rights and legitimate interests is further evident because Respondent removed the resolving website from <xomoil.com> after receiving the Complaint. Taking down of a webpage at a disputed domain name after receiving a Complaint may be evidence of a lack of rights or legitimate interests in that domain name. See Wells Fargo & Company v. Emily Evans, FA 1438708 (Forum May 21, 2012) (Finding that after being contacted by Complainant, Respondent took down the site and this current non-use of the disputed domain name was also not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant claims the disputed domain name now resolves to a blank page. See Additional Submission-Complainant, at Attached Ex. C. The Panel takes this as further evidence that Respondent lacks rights and legitimate interests in the disputed domain name.
Respondent claims it is commonly known by the disputed domain name based upon its registration in Egypt of the trademark “Exxon Mobil Lubricants.”, but as mentioned under the first element of the Policy Respondent has not provided any registration certificates for the EXXON or XOM marks or any connection between the name of the Registrant of the disputed domain name, Respondent in this case, and Exxon Mobil Co. Lubricants.
Considering the above, this Panel concludes that Complainant succeeded to prove the second element as per Policy ¶ 4(a)(ii).
Complainant argues that it has been involved in UDRP actions against Respondent before. A showing that a disputed domain name is part of a pattern of bad faith registrations can be evidence that the disputed domain name has been registered and used in bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum November 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant discusses a previous case in which it contends the respondent was the same party as Respondent, and claims the current resolving website still refers to one of the domain names transferred in that previous action. See Exxon Mobil Corporation v. newatlas/newatlas c/o salah elsokary/c/o exxonmobilemirates.net, FA 1401904 (Forum Aug. 18, 2011); see also Compl., at Attached Ex. G, p.4. Although this Panel does not note an obvious connection with the previous case Exxon Mobil Corporation v. newatlas/newatlas c/o salah elsokary/c/o exxonmobilemirates.net, FA 1401904, (Forum Aug. 18, 2011), this Panel cannot help to notice the similarities between the defenses, names and brands used by Respondent in these proceedings with those used by the respondent in the previous case. In addition, considering that the contentions of Respondent did not rebut any of the asserted connection between these proceedings and the previous case, this Panel is inclined to find that Respondent registered and used <xomoil.com> as part of a pattern of bad faith registration and hold that Respondent therefore registered the disputed domain name in bad faith per Policy ¶ 4(b)(ii).
Complainant also contends that Respondent is using <xomoil.com> and its resolving website to create the impression of being affiliated with Complainant. Use of a disputed domain name to benefit commercially from the creation of a false impression of being connected to a complainant can be evidence of bad faith per Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the Complainant’s connection with the website by selling counterfeit products, and thus showed Policy ¶ 4(b)(iv) bad faith). Complainant contends that Respondent is using a logo obviously connected with Complainant’s legitimate logo, and is using the resolving website to create confusion as to the sponsorship or affiliation of the content on the website. See Compl., at Attached Ex. G. Complainant also contends that the products offered for sale at the resolving website may be counterfeit. This Panel agrees and finds Respondent to have acted in bad faith as per Policy ¶ 4(b)(iv).
Complainant argues further that Respondent had actual knowledge of Complainant's rights in the EXXON and XOM marks. Complainant argues that Respondent's offering of Complainant's own products and competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, this Panel find that Respondent had actual knowledge of Complainant's famous mark and designation with the stock symbol XOM and of its rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
In conclusion, this Panel finds that Complainant succeeded to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xomoil.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Beatrice Onica Jarka Panelist
Dated: April 21, 2017
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