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Generic Top Level Domain Name (gTLD) Decisions |
Exxon Mobil Corporation v. Stephen
Nurwono
Claim Number: FA0204000112532
PARTIES
Complainant
is Exxon Mobil Corporation, Irving,
TX (“Complainant”) represented by Laura
D. Robertson, of Fulbright &
Jaworski LLP. Respondent is Stephen Nurwono, Cerritos, CA (“Respondent”).
The
domain name at issue is <mobil.biz>,
registered with R&K Global Business
Services, Inc.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent
with the Registry Operator, NeuLevel
and with the National Arbitration Forum
(the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 27, 2002; the Forum
received a hard copy of the Complaint on
April 28, 2002.
On
May 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 29,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 23, 2002.
Complainant’s
Additional Submission was received and determined to be complete on May 28,
2002.
On June 6, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Tyrus R. Atkinson, Jr., as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
ExxonMobil
Oil Corporation (hereinafter “EMOC”), a wholly owned subsidiary of the
Complainant, Exxon Mobil Corporation (hereinafter
“Complainant”) owns the mark
MOBIL. EMOC has licensed the right to
use these marks to Complainant.
The
domain name <mobil.biz> is
identical to EMOC’s marks for which Complainant has a license.
Respondent
has no rights or legitimate interest in the domain name <mobil.biz>.
Respondent does not own a trademark registration for the mark
MOBIL. Additionally, Respondent is not
known by the name MOBIL, and he does not operate a business or other
organization under the name of
MOBIL.
Further, Respondent has made no demonstrable preparations to use the
domain name <mobil.biz> in
connection with a bona fide offering of goods or services.
Respondent
registered the domain name <mobil.biz>
in bad faith. Complainant’s MOBIL mark
is famous. It is used worldwide by both
Complainant and its wholly owned subsidiary to identify a variety of products
and a variety of services.
When
Respondent applied to register the <mobil.biz>
domain name, it warranted to its Registrar that registration of the <mobil.biz> domain name would not
infringe upon or otherwise violate the rights of a third party. Because the mark MOBIL is famous and the
subject of numerous U.S. trademark registrations, Respondent either knew or
should have known
by virtue of the constructive notice provided by the
registrations, that Complainant had rights in the MOBIL mark.
B.
Respondent
The
Respondent is a naturalized U.S. citizen who was born in Indonesia and has been
involved in the computer industry for 15 years. The Respondent is currently involved in maintaining e-commerce
business activities, and is planning to serve the Indonesian e-commerce
business.
As a professional computer programmer, the Respondent
has registered other domain names based upon Indonesian words such as
<iklan.biz>,
and can show demonstrable preparations to use the domain
name in connection with a bona fide offering of goods or services.
MOBIL
is an Indonesian word, which means “car” and is derived from the Dutch word
“automobiel.” MOBIL is a commonly used
Indonesian word.
Complainant
should not have exclusive ownership nor licensing rights of commonly used
Indonesian words, or words commonly used in
other languages.
Complainant’s
trademarks cover lubricants, radios, clothing names, uniforms, house organs,
dramatic series of televisions programs,
clocks, retail foods store services,
towels, travel services, chemicals, paints and other goods and services, not
cars.
Complainant’s
MOBIL mark is undoubtedly famous, as it is shown by the wide variety of
services EMOC tries to license.
However, EMOC should be conscious that the Internet is a worldwide
medium that brings together peoples of different cultures and languages.
Respondent
has the rights or legitimate interest in the domain name <mobil.biz> and has made demonstrable preparation to use the
domain name for Indonesian Internet business.
Respondent
did not register the domain name in bad faith.
Respondent has no intention of infringing upon or otherwise violating
the rights of EMOC, because of the worldwide characteristic
of the Internet;
and the nature of business. The Respondent is not interested in the lubricant
associated businesses, but is interested
in the “car” related e-commerce
possibilities specific to the Indonesian or Indonesian-speaking market.
C.
Additional Submissions
Complainant
points out Respondent’s alleged lack of evidence set out in the Response of
legitimate rights and interests and lack of
bad faith. Complainant rebuts Respondent’s argument
that Complainant has no rights in Indonesia for the mark MOBIL, and, as such,
has no claim
to the <mobil.biz>
domain. Complainant submits that it
owns trademark registrations for the word MOBIL not only in Indonesia, but in
what appears to be every
country in the world and attaches evidence of these
registrations by registration number and date of registration.
Complainant is a major corporation
located in Irving, Texas, which has, for a long period of time, engaged in the
oil, lubricant,
service station, and related business in the United States and
elsewhere in the world.
Complainant owns extensive trademark
registrations in the United States and in virtually every other country in the
world for the
mark, MOBIL.
The mark, MOBIL, is a distinctive, famous
mark not only in the United States but worldwide.
Respondent is a United States citizen,
born in Indonesia, who operates as a professional computer programmer, in
Cerritos, California.
Respondent registered the domain name, <mobil.biz>, on March 27, 2002.
Respondent had notice of Complainant’s
trademark registrations in the mark, MOBIL, at the time of the domain name
registration.
Complainant has rights and interests in
the word, MOBIL.
Respondent has no legitimate rights or
interests in the word MOBIL or <mobil.biz>
Respondent registered the domain name, <mobil.biz>, in bad faith.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1) the domain name is identical to a
trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the
domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has rights in the mark, MOBIL, by virtue of its numerous trademark
registrations in the United States and in other countries
throughout the
world.
Respondent
suggests that Complainant has no rights to MOBIL, since MOBIL, is an Indonesian
word meaning “car.” It is a commonly
used Indonesian word, used daily in both conversation and in a literal way,
Respondent contends. Complainant demonstrates
that it owns a trademark
registration for MOBIL in the Country of Indonesia. The fact that a trademark registered word is a common word in a
foreign language does not mean that it cannot be registered and be
protected. See
Valio Oy v. Tcova Oy, D2001-0805 (WIPO Aug. 24, 2001); Kvaerner ASA v. Tele og Media Consult as,
D2001-0809 (WIPO Sept. 12, 2001).
Complainant
has rights in the mark.
It is obvious from the pleadings and
evidence that Complainant never licensed Respondent to use the mark, MOBIL, and
that Complainant
and Respondent are not affiliated in any way. Complainant contends that Respondent does
not own a trademark registration for the mark, MOBIL, nor does Respondent
operate a business
or other organization under the name MOBIL, nor has
Respondent made a demonstrable preparation to use the domain name <mobil.biz> in connection with a
bona fide offering of goods and services.
When such a showing is made, the following rule applies.
“When a Complainant asserts that a
Respondent has no rights or legitimate interests in respect of a domain mane,
it is incumbent upon
the Respondent to produce evidence of such rights and
interests.” PRL USA Holdings, Inc. v. Search Hound, D2001-00010 (WIPO
Feb. 13, 2002).
The Respondent can demonstrate his rights
and legitimate interests in the domain name in responding to the Complaint in
any of the
ways set out in Paragraph 4(c) the Start-up Trademark Opposition
Policy and Rules for .BIZ.
The first of the three methods set out
is that Respondent may show that he is the owner or beneficiary of a trade or
service mark
that is identical to the domain name. Respondent makes no such contention nor offers any evidence of
any such trade or service mark.
The third of the three methods is that
Respondent has been commonly known by the domain name. Respondent makes no such contention.
The only method Respondent relies upon is
the remaining of the three methods.
Respondent contends that before any notice to him of the dispute, he
used or made demonstrable preparations to use, the domain name,
in connection
with a bona fide offering of goods or services.
As evidence of Respondent’s preparation
for use of the domain name, Respondent states that he has registered other
domain names based
upon Indonesian words such as <iklan.biz>, and can
show demonstrable preparations to use the domain name. Respondent contends that he installed a web
server on another domain name based upon an Indonesian words such as
<iklan.biz>. Respondent says that
he intends to do something with the domain name in Indonesian e-commerce. No documents are attached to the Response to
support this allegation. No documents
are attached to the Response to support the allegations regarding
<ilkan.biz>. Even so, the use or preparation
to use <iklan.biz> is
not preparation for use of <mobil.biz>. All that remains is the bare statement made
by Respondent that he plans to use <mobil.biz>
in the future in some unspecified manner that relates in some way with “cars.”
Recent STOP Policy decisions insist that
a respondent produce “concrete evidence” of rights and legitimate interests. See
PRL USA Holdings, Inc. v. Search Hound, DBIZ2001-00010 (WIPO Feb. 13,
2002). That case accepted the reasoning
set out in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000), which stated “Concrete evidence constitutes more than mere personal
assertions. Just as a Panel
should require a complainant to establish by means
other than mere bald assertions that it is the owner of registered marks, so
should
the Panel require that a respondent come forward with concrete evidence
that the assertions made in the response are true. Evidence in the form of documents or third party declarations
should be furnished in support of such assertions.”
See also Twentieth Century Fox Film Corp.
v. Bernstein, FA102962
(Nat. Arb. Forum Feb. 27, 2002) which found that Respondent’s assertion that
she registered the domain name in order to get
a website address for her
planned dance studios, without evidentiary support, was insufficient to
establish that she had rights or
interests in respect to the domain name at
issue.
Respondent has presented nothing to
support his rights or legitimate interests other than his simple assertion that
he will use the
domain name sometime in the future.
That showing fails to satisfy the
standard set out in PRL USA Holdings, Inc. v. Search Hound, which
standard the Panel finds is the correct standard to be applied in this case.
Complainant prevails on this issue.
It
is the responsibility of Complainant to prove either bad faith registration or
use of the domain name. In this case
there has been no use. The issue is
whether Complainant can show bad faith registration. The ways Complainant can
attempt to show bad faith are set out in
Paragraph 4(b)
of
the Policy. Under the circumstances
that usually exist in a STOP proceeding, it is difficult for a Complainant to
produce direct evidence on these
issues. However, it is clear that
Respondent was aware of Complainant’s mark prior to Respondent registering the
domain name. Respondent admits that it
is a famous mark. Respondent is a computer programmer in California. Considering the famous and common notoriety of
Complainant’s mark MOBIL, and Respondent’s acknowledgment of its common and notorious
existence, bad faith registration can be correctly inferred. See
Victoria’s Secret v. Hardin, FA96694 (Nat. Arb. Forum Mar. 31,
2001); Samsonite Corp. v. Colony Holdings,
FA94313 (Nat. Arb. Forum Apr. 17, 2000).This inference in enforced by
Respondent’s stated purpose of using the domain name in some enterprise relating to cars. Complainant’s business is
closely related to cars. There can be little doubt that confusion will
inevitably arise when the Respondent finally
uses
the domain name in the manner that he says he will. The attempt to attract, for commercial gain, Internet users to
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 Respondent’s web site or location
or of a product
or service on the web site or location, constitutes evidence of bad faith registration.
See Paragraph 4(b)(iv) of the Policy. That
likelihood of confusion with the Complainant’s mark MOBIL, by Respondent’s
web
site at <mobil.biz>, once put
into operation by Respondent, is obvious and inescapable. That is a result the Policy is calculated to
avoid. See Fluor Corp. v. Song, FA102757 (Nat. Arb. Forum Jan 31,
2002); Pillsbury Co. v. Prebaked Scandinavia ab, FA102970 (Nat. Arb.
Forum Jan 31, 2002).
Based
upon the facts and circumstances of this domain name dispute case, the Panel infers
the intent necessary to make a finding under
Paragraph (b)(iv) of the Policy.
Complainant prevails on this issue.
DECISION
THE DECISION OF THE
PANEL IS THAT THE DOMAIN NAME, <MOBIL.BIZ>, NOW REGISTERED TO RESPONDENT,
STEPHEN NURWONO, BE TRANSFERRED
TO COMPLAINANT, EXXON MOBILE CORPORATION.
THERE ARE NO FURTHER IP CLAIMS PENDING
UNDER THE STOP POLICY AGAINST THIS DOMAIN NAME.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 20, 2002
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