Chevron Intellectual Property LLC v. PAUL DAVID SONG
Claim Number: FA1808001800906
Complainant is Chevron Intellectual Property LLC (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is PAUL DAVID SONG (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gs-caltex.com>, registered with Uniregistrar Corp.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2018; the Forum received payment on August 10, 2018.
On August 14, 2018, Uniregistrar Corp confirmed by e-mail to the Forum that the <gs-caltex.com> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar Corp 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, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2018 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@gs-caltex.com. Also on August 20, 2018, 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 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn appointed 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, Chevron Intellectual Property LLC, together with its parent company, Chevron Corporation, is one of the world’s leading integrated energy companies which globally in the fuel and energy industries. In connection with this business, Complainant adopted the unique and coined term CALTEX in the 1930’s which it uses as both a company name and a trade and service mark in connection with its petroleum products and services, primarily lubricants and service stations. Complainant operates and jointly owns an oil refinery in South Korea under the name GS CALTEX. Complainant has rights in the CALTEX mark based upon its registration of the mark with multiple trademark agencies throughout the world, including with the South Korea Intellectual Property Office (“KIPO”) (e.g. Reg. No. 40-0000585-0000 registered Nov. 30, 1954). Respondent’s <gs-caltex.com> domain name is confusingly similar to Complainant’s CALTEX mark, as the domain name contains the mark in its entirety, incorporating “GS” to suggest a connection to Complainant’s affiliate.
Respondent has no rights or legitimate interests in the <gs-caltex.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the CALTEX mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is seeking to profit from the registration of the name via subsequent sale of the name and/or by diverting Internet users seeking Complainant’s website to its own website for commercial gain.
Respondent registered and is using the <gs-caltex.com> domain name in bad faith. There is no reason for Respondent to have registered the domain name except to: 1) disrupt the business of Complainant by causing people to mistakenly believe they are accessing Complainant’s website associated with its affiliate GS CALTEX in South Korea, or 2) attract for commercial gain, people to Respondent, falsely believing it is Complainant’s online location by creating a likelihood of confusion with Complainant’s CALTEX marks and GS CALTEX name and mark. Further, the fact that Respondent registered a domain name using Complainant’s famous mark and identical name used in Korea and India indicates Respondent had actual knowledge of Complainant and its rights in the mark(s) at the time Respondent registered and subsequently used the domain name.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. Respondent sent an email in which it claimed the name GS-CALTEX means “Good Special Calorie Technologies,” and that it uses the name for world-wide health improvement.
The Panel notes that Respondent registered the disputed domain name on June 11, 2017.
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 (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.”).
Preliminary Issue: Deficient Response
On August 24, 2018, the Forum received an e-mail correspondence from Respondent. The correspondence was not labeled a response, and was not responsive to Complainant’s contentions. Thus, the Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, at its discretion, may choose whether to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”). The Panel finds the informal response to be neither responsive nor persuasive regarding the issues raised in the Complaint.
Identical and/or Confusingly Similar
Complainant claims rights in the CALTEX mark based upon registration of the mark with the multiple trademark agencies, including the KIPO (e.g. Reg. No. 40-0000585-0000 registered Nov. 30, 1954). Registration of a mark with a national trademark agency such as the KIPO is sufficient to establish rights in that mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”); see also Daimler AG v. Noori net, FA 1323972 (Forum June 23, 2010) (finding the complainant’s registration of the MERCEDES mark with multiple trademark agencies, including the South Korean Intellectual Property Office (“KIPO”), sufficient to establish rights in the mark per Policy ¶ 4(a)(i)). The Panel therefore holds that Complainant’s multiple registrations of the CALTEX mark are sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <gs-caltex.com> domain name is confusingly similar to the CALTEX mark, as the name contains the mark in its entirety, merely appending the letters “GS” to suggest a connection to Complainant’s affiliate. Addition of related, descriptive terms to a mark does not distinguish the resultant domain name from the mark in a Policy ¶ 4(a)(i) analysis. See Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”). Complainant claims that the term “GS” was included to draw a connection to Complainant’s brand and affiliate company GS CALTEX.
The Panel notes that the domain name also incorporates a hyphen, which is inconsequential under the Policy. See ADP, LLC. v. Ella Magal, FA1738958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). The Panel therefore determines that the <gs-caltex.com> domain name is confusingly similar to the CALTEX mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <gs-caltex.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CALTEX mark in any way. WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usaman Ramzan,” which does not resemble the domain name. On this record, the Panel concludes that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “PAUL DAVID SONG,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s marks. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <gs-caltex.com> domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <gs-caltex.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, Complainant contends, Respondent uses the name to seek to profit from the registration of the name by diverting Internet users seeking Complainant’s website to its own website for commercial gain. Use of a confusingly similar domain name to divert Internet users by suggesting a relationship with a mark-holder is not a use which amounts to a bona fide offer off goods or services per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither 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 also Summit Group, LLC v. LSO, Ltd., FA 758981 (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)). Complainant claims that the domain name resolves to a website which quickly re-directs to a website offering the domain name for sale. The Panel therefore finds that Respondent does not use the disputed domain name in a manner indicative of having rights or legitimate interests therein per Policy ¶¶ 4(c)(i) or (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent’s use of the <gs-caltex.com> domain name creates confusion with Complainant’s mark and disrupts Complainant’s business, demonstrating that Respondent registered and used the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant for commercial gain is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain); see also Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Complainant claims that Respondent’s registration of the <gs-caltex.com> domain name, which identically includes its well-known mark, strongly implies a direct relationship with Complainant and suggests bad faith. The Panel agrees and finds that Respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's CALTEX mark, and the similarity of the <gs-caltex.com> domain name to the GS CALTEX brand and mark, it is inconceivable that Respondent could have registered the domain name without actual knowledge of Complainant's rights in the mark. A respondent’s actual knowledge of a complainant’s mark at the time of registration of a confusingly similar domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). Complainant further asserts that it jointly owns and uses the GS CALTEX name and mark in Korea and India, and operates a legitimate website at <gscaltex.com>. The Panel agrees that these facts support a finding that Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the name in bad faith.
Complainant has therefore also satisfied ¶ 4(a)(iii) 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 <gs-caltex.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: September 26, 2018
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