Exxon Mobil Corporation v. Customer Domain Admin / Nice IT Services Group Inc.
Claim Number: FA1912001874884
Complainant is Exxon Mobil Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, United States. Respondent is Customer Domain Admin / Nice IT Services Group Inc. (“Respondent”), Dominica.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <offshores-exxonline.com> and <offshore-exxonline.com>, registered with NameSilo, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 12, 2019; the Forum received payment on December 12, 2019.
On December 13, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <offshores-exxonline.com> and <offshore-exxonline.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2020 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@offshores-exxonline.com, postmaster@offshore-exxonline.com. Also on December 16, 2019, 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 January 8, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil
Anthony Brown QC 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
Complainant made the following contentions.
Complainant, Exxon Mobil Corporation, is one of the world’s largest publicly traded international oil and gas companies, providing energy that helps underpin growing economies and improve living standards around the world. Complainant has rights in the EXXON mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 884,420, registered Jan 20. 1970). Respondent’s <offshores-exxonline.com> and <offshore-exxonline.com> domain names are confusingly similar to Complainant’s EXXON mark. Respondent incorporates the mark in its entirety and adds the generic or descriptive terms “offshore,” “offshores,” and “line” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <offshores-exxonline.com> and <offshore-exxonline.com> domain names as Respondent is not commonly known by the disputed domain names. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain names to create a duplicate of Complainant’s legitimate website that includes a page where employees could enter personal information. Respondent uses Complainant’s EXXON mark in an attempt to confuse internet users that Respondent is somehow affiliated with Complainant. Respondent redirects to webpages unrelated to Complainant’s business.
Respondent registered and used the <offshores-exxonline.com> and <offshore-exxonline.com> domain names by giving the false impression that Respondent is affiliated with Complainant by prominently displaying Complainant’s EXXON mark. Lastly, Respondent had actual knowledge of Complainant’s rights in the EXXON mark prior to registration of the disputed domain names due to the worldwide presence and fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is one of the world’s largest publicly traded international oil and gas companies, providing energy that helps underpin growing economies and improve living standards around the world.
2. Complainant has established its trademark rights in the EXXON mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 884,420, registered Jan 20. 1970).
3. Respondent registered the <offshores-exxonline.com> domain name on December 3, 2019 and the <offshore-exxonline.com> domain name on June 5, 2019.
4. Respondent is using the disputed domain names to create a duplicate of Complainant’s legitimate website that includes a page where employees could enter personal information. Respondent uses Complainant’s EXXON mark in an attempt to confuse internet users that Respondent is somehow affiliated with Complainant. Respondent redirects to webpages unrelated to Complainant’s business.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims to have rights in the EXXON mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for its EXXON mark (e.g. Reg. No. 884,420, registered Jan 20. 1970). Therefore, the Panel finds that Complainant has adequately shown rights in the EXXON mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s EXXON mark Complainant argues that Respondent’s <offshores-exxonline.com> and <offshore-exxonline.com> domain names are confusingly similar to Complainant’s EXXON mark. Registration of a domain name that contains a mark in its entirety and adds a generic or descriptive term along with a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Here, Complainant argues that Respondent incorporates the mark in its entirety and adds the generic or descriptive terms “offshore,” “offshores,” and “line” along with the “.com” gTLD. Therefore, the Panel may find that Respondent’s domain names are confusingly similar to Complainant’s EXXON.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s famous EXXON trademark and to use it in its domain names, adding the generic or descriptive terms “offshore,” “offshores,” and “line”;
(b) Respondent registered the <offshores-exxonline.com> domain name on December 3, 2019 and the <offshore-exxonline.com> domain name on June 5, 2019;
(c) Respondent is using the disputed domain names to create a duplicate of Complainant’s legitimate website that includes a page where employees could enter personal information. Respondent uses Complainant’s EXXON mark in an attempt to confuse internet users that Respondent is somehow affiliated with Complainant. Respondent redirects to webpages unrelated to Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interest in the <offshores-exxonline.com> and <offshore-exxonline.com> domain names as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the EXXON mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Customer Domain Admin/Nice IT Services Group Inc.” and there is no other evidence to suggest that Respondent was authorized to use the EXXON mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain names to create a duplicate of Complainant’s legitimate website that includes a page where employees could enter personal information. Use of a disputed domain name to appear like a complainant’s official website is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Fossil, Inc. v. cheng gong, FA 1458182 (Forum, October 2, 2012) (finding that Respondent’s efforts to use the FOSSIL mark to divert customers for Respondent’s own commercial gain was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Here, Complainant has provided the Panel with screenshots of the website to which Respondent’s <offshores-exxonline.com> domain name resolves that show Complainant’s mark prominently displayed along with information related to its business. Therefore, the Panel agrees and finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent uses the <offshore-exxonline.com> redirects to webpages unrelated to Complainant’s business. Use of a disputed domain name to resolve to a webpage unrelated to a complainant is not a bona fide offering of goods or services or legitimate noncommercial fair use per Policy ¶¶ 4(c)(i) or (iii). See MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp., FA1698585 (Forum Nov. 28, 2016) (“Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.”). Here, Complainant has provided a screenshot of the website of Respondent’s domain name that resolves to the <tweekoeien.com> webpage. This site is merely a page that shows a picture of two cows (apparently Twee Koeien translates to “Two Cows” in Dutch). Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and used the <offshores-exxonline.com> and <offshore-exxonline.com> domain names by giving the false impression that Respondent is affiliated with Complainant by prominently displaying Complainant’s EXXON mark. Use of a disputed domain name in an attempt to pass off as a complainant by showing similar services and products may be evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Here, Complainant has provided the Panel with screenshots of Respondent’s <offshores-exxonline.com> domain name that shows Complainant’s mark prominently displayed along with information related to its business. Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the EXXON mark prior to registration of the disputed domain names due to the worldwide presence and fame of the mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is considered adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Registration of a domain name that includes a famous mark may be evidence of actual knowledge per policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Here, Complainant has provided the Panel with multiple articles and rankings showing the fame and value of the EXXON mark. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain names which constitutes bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <offshores-exxonline.com> and <offshore-exxonline.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 9, 2020
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