DECISION

ChevronTexaco Corporation v. Kent Tanik

Claim Number: FA0302000145788

PARTIES

Complainant is ChevronTexaco Corporation, San Ramon, CA (“Complainant”) represented by Mary A. Francis, of ChevronTexaco Corporation.  Respondent is H. Kent Tanik, Mountain View, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <chevrontexaco.biz>, registered with Register.Com.

PANEL

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.

Hon. H. Curtis Meanor, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 14, 2003; the Forum received a hard copy of the Complaint on February 18, 2003.

On February 21, 2003, Register.Com confirmed by e-mail to the Forum that the domain name <chevrontexaco.biz> is registered with Register.Com and that the Respondent is the current registrant of the name.  Register.Com has verified that Respondent is bound by the Register.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On February 24, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 17, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@chevrontexaco.biz by e-mail.

A timely Response was received and determined to be complete on March 12, 2003.

On March 20, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed H. Curtis Meanor as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

            A.            Complainant

Complainant is the owner of the trademark CHEVRON known globally for energy-related goods and services, including vehicle fuels, lubricants and service station services.  Complainant has used the trademark CHEVRON without interruption to identify goods and services in commerce since at least as early as 1935. Complainant operates a public website at <www.chevron.com>. Complainant owns hundreds of registrations for the trademark CHEVRON throughout the world.  In the U.S., Complainant owns at least 44 federal trademark registrations on the Principal Register for the trademark CHEVRON, most of which are incontestable under 15 U.S.C. § 1065.  Complainant’s U.S. registrations for the trademark CHEVRON constitute constructive notice of Complainant’s claim of rights in the trademark CHEVRON.  15 U.S.C. § 1072. 

           

Complainant, through itself and wholly owned subsidiaries, is the owner of the trademark TEXACO known throughout the world for energy-related goods and services, including vehicle fuels, lubricants and service station services.  Complainant has used the trademark TEXACO without interruption to identify goods and services in commerce since at least as early as 1903.  Complainant operates a public website at <www.texaco.com>.  Complainant owns hundreds of registrations for the trademark TEXACO throughout the world.  In the U.S., Complainant owns more than 50 federal trademark registrations on the Principal Register for the trademark TEXACO, most of which are incontestable under 15 U.S.C. § 1065.  Complainant’s U.S. registrations for the trademark TEXACO constitute constructive notice of Complainant’s claim of rights in the trademark TEXACO.  15 U.S.C. § 1072.  The term TEXACO has no dictionary meaning and serves uniquely as a trade name and trademark for Complainant’s products and services.

           

Complainant is the owner of the name and trademark CHEVRONTEXACO, which was adopted and first used on October 9, 2001, the effective date of the merger of Texaco Inc. into Chevron Corporation.  Since that date, a date that precedes the date of registration of the domain name in dispute, Complainant has used the CHEVRONTEXACO logotype and mark to identify itself as a company and as the source of various energy-related products and services.  Complainant operates a public website at <www.chevrontexaco.com>.  The term CHEVRONTEXACO has no dictionary meaning and serves uniquely as a trade name and trademark for Complainant’s products and services.

B.       Respondent

Respondent admits that the name “chevrontexaco” is a trademark.  He contends,

however, that his domain name ends with the extension “.biz” and claims that the

entire domain name <chevrontexaco.biz> as a whole word is not a trademark

belonging to ChevronTexaco.  The claim is that the similarity between Respondent’s domain name and plaintiff’s registered trademark is wholly coincidental.

Respondent is a software engineer and states that he registered the domain name for the sole purpose of selling services that have no direct or indirect connection with the Complainant and its services and products.  While Respondent admits that he has not used the domain name, he has prepared for its use. Respondent says that starting July 4, 2003, he intends to use the domain name to sell a language translation service in preparation for the Diversity Visa Lottery, also known as the Green Card Lottery.  Respondent attaches documents he has prepared showing his intent to use the domain name with respect to the Green Card Lottery and to provide services with respect thereto in Turkey with his promotional material both in English and the Turkish language.  Respondent intends to use the domain name to promote these services through the Internet.  Respondent states that the fact that he has not offered to sell his domain name to Complainant is indicative of his good faith. 

C.        Additional Submissions

Complainant in an additional submission notes that Respondent concedes that

“chevrontexaco” is a trademark.  Complainant denies that the addition of the

suffix “.biz” indicates a lack of identity between the domain name and

Complainant’s trademark.  Authority is cited to support this proposition.  Complainant also notes that despite the asserted differences between its trademark and Respondent’s domain name, they are at least confusingly similar.  Complainant contends that the mark “chevrontexaco” uniquely refers to the Complainant.  Complainant asserts that the Respondent’s claim that the similarity between his domain name and Complainant’s trademark is wholly coincidental is an “incredible assertion.”

FINDINGS

1. Complainant has met its burden to produce by a preponderance of the evidence that the domain name at issue is identical to trademarks in which Complainant has rights.

2. Complainant has met its burden to produce by a preponderance of the competent evidence that Respondent has no rights or legitimate interest in respect to the domain name at issue.

3.       Complainant has met its burden to prove by a preponderance of the evidence that the domain name at issue has been registered in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

Complainant holds a registered trademark for both CHEVRON and TEXACO with the United States Patent and Trademark Office.

Complainant asserts that Respondent’s <chevrontexaco.biz> domain name is confusingly similar to Complainant’s two marks because it merely combines both marks  into one domain name and adds the top-level domain “.biz.”  The combination of Complainant’s two famous marks does not create any distinct characteristics because Internet users will still identify the disputed domain name with Complainant.  See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where the Respondent combines the Complainant’s POKEMON AND PIKACHU marks to form the “pokemonpikachu.com” domain name);  see also Nintendo of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding “gameboy.com” identical and confusingly similar to the Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words).

Complainant also notes that the addition of the top-level domain “.biz” does not add any

distinct characteristics capable of overcoming a claim of confusing similarity.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding “pomellato.com” identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).  Complainant is correct in asserting that Respondent’s claim that the similarities between Complainant’s mark and his domain name is purely coincidental is an “incredible assertion.” 

The above discussion makes it clear that despite the suffix “.biz” in Respondent’s domain name, it is for present purposes identical to Complainant’s registered mark CHEVRONTEXACO, which has been in use since the merger of Chevron and Texaco in October, 2001 before Respondent registered his domain name in March, 2002.

Rights and Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii) because he has made no use of <chevrontexaco.biz>since its registration in March 2002.  This behavior on the part of Respondent constitutes passive holding and therefore does not give rise to rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Vestel Elektronik Sanayi v. Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name).

           

Complainant further argues that Respondent is not commonly known as CHEVRON, TEXACO, CHEVRONTEXACO, or <chevrontexaco.biz> and therefore has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Registration and Use in Bad Faith

Complainant asserts that Respondent could only have registered the disputed domain name to sell it to Complainant, because based on the fame of Complainant’s marks there is no potential good faith use for the <chevrontexaco.biz> domain name.  Respondent registered the disputed domain name with opportunistic bad faith.  See Red Bull GmbH v. Gutch, D2000-0766 9WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith).

Respondent registered <chevrontexaco.biz> in bad faith because he was on notice of Complainant’s rights when he registered the domain name.  Complainant’s marks are famous; therefore, it can be inferred that Respondent had actual notice of the existence of Complainant’s rights.  Registration of an infringing domain name, despite actual notice, is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F. Supp.2d 1339, 1349 (S.D. Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).   Respondent’s argument that by not offering to sell his domain name to Complainant, he has evidenced his good faith is of no avail.  Such an offer would be clear evidence of bad faith.

DECISION

             

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <chevrontexaco.biz> domain name be TRANSFERRED from Respondent to Complainant.

HON. H. CURTIS MEANOR

Panelist

DATED:              March 26, 2003

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