Generic Top Level Domain Name (gTLD) Decisions

TEXACO, INC.
COMPLAINANT,

vs.

TEXACO DOMAIN CANADA
RESPONDENT.

DECISION
Forum File No.:  FA0005000094869

            BEFORE:         The Honorable Paul A. Dorf (Ret.), Arbitrator

            Complainant seeks transfer of the domain name "texacocanada.com" pursuant to the Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy  as adopted and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") as supplemented by the National Arbitration FORUM's supplemental Rules to ICCAN's Uniform Domain Resolution Policy.  "texacocanada.com" is registered with Register.com.  By registering its domain name with Register.com, Respondent agreed to resolve any dispute regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

            Before the Arbitrator are the Complaint, Respondent's Response to Domain Name Complaint, and Complainant's Response to Answer Filed by Respondent,.  Complainant's prayer for relief was that the domain name be transferred to Complainant. 

            Complainant's Response to Answer Filed by Respondent was not considered in this case, as it was received after this Arbitrator reviewed the Complaint and Response and rendered his decision, by dictating this report.  Also, the Response was not timely filed under the Rules.

                                                                        FACTS

            The domain name "texacocanada.com" was registered by Respondent on February 3, 2000.  Complainant has owned the mark "Texaco" since its registration with the United States Patent and Trademark Office since 1906.  Complainant also owns 34 other registrations for various goods and services, as set forth in their Complaint.  In addition to the United States registrations, Complainant owns 13 registrations issued by the Canada Trademark Office, as set forth in their Complaint.  The goods and services sold under Complainant's marks in the U.S. and  many other countries, including Canada, amount to several billion dollars per year.  The Complainant's marks have come to be famous and have distinguished them from the goods and services of others. 

            Respondent registered the domain name "texacocanada.com" on February 3, 2000.  On that same date, Kenneth J. Harvey, representative of Texaco Domain Canada, sent an e-mail to Darryl Martin of Texaco stating that he was the owner of "texacocanada.com" and that the domain name

was up for sale at GreatDomains.com.  He asked that Mr. Martin pass this information along to the appropriate individuals.  On March 16, 2000, Complainant, through its representative Terri J. Frank,  and advised  Respondent that they were infringing on the Texaco trademark and requested that Respondent withdraw the domain registration or assign it to Texaco.    Respondent sent a reply to Complainant on March 17, 2000 stating that the domain name was not being used in trade, that it was simply a piece of cyber real estate that legally belonged to the Respondent.  Also in this correspondence, Respondent suggests that Complaint propose its terms of settlement.

                                                                  DISCUSSION

            Section 4(a) of the ICAHN Uniform Domain Name Dispute Policy (the "Rules") requires the Complainant to prove each of the following three elements in order to sustain a claim that a domain name should be cancelled or transferred:

(i)         the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;  and

(ii)        the registrant 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.

            Section 4(b) provides:

            Evidence of Registration and Use in Bad Faith.  For the purposes of Paragraph 4(a)(iii), the following circumstances, in  particular but without limitation, if found by this Arbitrator to be present, shall be evidence of the registration and use of a domain name in bad faith.

(i)         circumstances indicating that [the Respondent has] registered or [the Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the Respondent's] documented out-of-pocket costs directly related to the domain name;  or

(ii)        [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent ], engaged in a pattern of such conduct or

(iii)       [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor;  or

(iv)       by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] web site or location or of a web site or location of a product or service on [the Respondent's] web site or location.

            The Complainant bears the burden of proof on these issues.  ^[1]

                 Similarity of Domain Name with Marks in Which Complainant Has Rights

            As stated above, the Complaint is the owner of the mark "TEXACO" in both the United States and Canada, and the distinctive portion of that domain name is identical to Complainant's mark.  Respondent does not address this issue in their Response. 

            Thus we find that the first element of Section 4(a) is satisfied.  The marks and domain name are confusingly similar and the Complainant has rights to the marks.

                       Respondent's Rights or Legitimate Interests in the Domain Name

            As to the second element of Section 4(a), Respondent's registration of the domain name could be said to allow its rights in the name.  But it appears that the second element requires more than just registration.  If the second element were to be deemed satisfied by mere registration, a complainant could never show that a respondent had no rights or legitimate interests in the domain name for all are registered.  More, therefore, must be required.  A "right" bespeaks of a legal entitlement such as a mark.  An "interest" is something less.  It could be found in use of  a generic term as a link to another web site, significant promotional expenses with respect to a generic name or an established use of the term prior to registration. 

            In its February 3, 2000, e-mail to the Complainant, Respondent states that the domain name is for sale and that Complainant may be interested in purchasing it.  On March 16, 2000, Complainant e-mailed Respondent requesting that they withdraw the domain name registration or assign it to Texaco, giving a deadline of April 1, 2000 to provide a response.  In its March 17, 2000 e-mail to Complainant, Respondent states that the domain name is a piece of cyber real estate owed by them.  They them suggest that they are willing to resolve the matter in an amicable fashion and request the Complainant to propose their terms of settlement.

            Respondent offered  the domain name for sale and suggested that the Complainant may be interested in purchasing it. 

            I, therefore, hold that the second element has been satisfied.

                                                                      Bad Faith

            The third element of Section 4(a) is bad faith.  The Rules require that the complainant offer evidence to satisfy one or more elements of Section 4(b) to the extent that they are applicable, and do not allow for the mere registration of a domain name that is similar or identical to a mark as conclusive evidence of bad faith. 

            As to Section 4(b)(i), Respondent did offer the domain name "texacocanada.com" for sale  and notified Complainant that he name was for sale, suggesting that they may be interested in purchasing said domain name.  This offer was tendered via e-mail on February 3, 2000, the same day the Respondent registered the domain name.  In light of the fact that Respondent notified the Complainant that the domain name was for sale on the same day it was registered, it appears that it was Respondent's intention to acquire the domain name for the purpose of offering it for sale to the Complainant.  Therefore, it is my conclusion that Section 4(b)(i) is satisfied.

            Section 4(b)(ii) is not applicable in this instance.

            Section 4(b)(iii), is not applicable as the Complainant and Respondent are not competitors.

            As to Section 4(b)(iv), the Respondent contends that he is using the site to promote his forthcoming book, Texaco Canada, which, by his own description, traces the history of Texaco's presence in Canada.  It would appear that the Respondent, by  his own admission, was aware of Texaco's presence in Canada and registered the domain name to create confusion with the Complainant's mark, and to attract Internet users to the website to promote his book. 

            Given the familiarity of Complainant's mark and their presence in Canada, it would be likely that consumers and others engaged in the same businesses as the Complainant will mistakenly believe that the domain name and any website it may be connected to will give the impression that said website is associated, affiliated with or sponsored by Texaco. 

            Therefore, I conclude that Section 4(b)(iv) is satisfied.

            Accordingly, it is decided that Register.com shall transfer the domain name "Texacocanada.com" to the Complainant.

Dated: June 27, 2000, by Judge Paul A. Dorf, (ret.), Arbitrator