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Generic Top Level Domain Name (gTLD) Decisions |
ChevronTexaco
Corporation v. Ling Shun Shing
Claim
Number: FA0302000146570
Complainant is ChevronTexaco
Corporation, San Ramon, CA,
U.S.A. (“Complainant”) represented
by Mary A. Francis, of ChevronTexaco Corporation. Respondent
is Ling Shun Shing, Shanghai, CHINA
(“Respondent”).
The domain name at issue is <chevronusa.com>, registered with Iholdings.Com, Inc. d/b/a
Dotregistrar.Com.
The undersigned certifies that she has acted
independently and impartially and to the best of her knowledge has no known
conflict
in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National
Arbitration Forum (the "Forum") electronically on February 21, 2003;
the
Forum received a hard copy of the Complaint on February 24, 2003.
On March 12, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail
to the Forum that the domain name <chevronusa.com>
is registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the current registrant of
the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com
has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.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 March 12, 2003, a Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement
Notification"),
setting a deadline of April 1, 2003 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@chevronusa.com by e-mail.
Having received no Response from Respondent, using the
same contact details and methods as were used for the Commencement
Notification,
the Forum transmitted to the parties a Notification of Respondent
Default.
On April 7, 2003, pursuant to Complainant's request to
have the dispute decided by a single-member Panel, the Forum appointed Sandra
Franklin 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." 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
makes the following assertions:
1. Respondent’s <chevronusa.com> domain name is
confusingly similar to Complainant’s CHEVRON
mark.
2. Respondent does
not have any rights or legitimate interests in the <chevronusa.com> domain name.
3. Respondent
registered and used the <chevronusa.com>
domain name in bad faith.
B. Respondent failed
to submit a Response in this proceeding.
Complainant holds numerous registrations for the CHEVRON mark throughout
the world. Complainant owns at least
forty-four trademark registrations with the U. S. Patent and Trademark Office,
including Registration Numbers
364,683 and 1,335,909. Complainant has used the CHEVRON mark since 1935 in relation to
its vehicle fuel, lubricants, and service station services. Complainant operates its main website at
<chevron.com>.
Respondent registered the <chevronusa.com>
domain name on October 8, 2002.
Respondent is using the disputed domain name to divert Internet users to
a search engine/portal website.
Respondent receives a commission for each Internet user who visits this
website. Respondent does not have a
license or permission from Complainant to use the CHEVRON mark. Respondent has registered other domain names
that incorporate misspellings of the marks of others, such as
<abcdisturbiting.com>
and <bankifamerica.com>.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
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.
Complainant has established that it has rights in the CHEVRON mark through
continuous use and registration with the U.S. Patent and
Trademark Office.
Respondent’s <chevronusa.com>
domain name is confusingly similar to Complainant’s mark because it
incorporates Complainant’s entire mark and merely adds the
geographic term
“usa.” The addition of a geographic
term does not sufficiently distinguish the domain name as to overcome a claim
of confusing similarity. See Sunkist Growers, Inc. v. S G &
Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding that the domain
names <sunkistgrowers.org>, <sunkistgrowers.net> and
<sunkistasia.com>
are confusingly similar to Complainant’s registered
SUNKIST mark and identical to Complainant’s common law SUNKIST GROWERS mark);
see also VeriSign, Inc. v. Tandon,
D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the
Complainant’s VERISIGN mark and the <verisignindia.com>
and
<verisignindia.net> domain names where Respondent added the word “India”
to Complainant’s mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a Response in this
proceeding. Thus, the Panel is
permitted to accept all reasonable allegations and inferences in the Complaint
as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA
95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant
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”).
Moreover, Respondent has failed to invoke any circumstances that could
demonstrate rights and legitimate interests in the domain name. When Complainant asserts a prima facie case against Respondent, the
burden of proof shifts to Respondent to show that it has rights or legitimate
interests pursuant to
Policy ¶ 4(a)(ii).
See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts
that Respondent has no rights or legitimate interests with
respect to the
domain, the burden shifts to Respondent to provide credible evidence that
substantiates its claim of rights and legitimate
interests in the domain name);
see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the Respondent has failed to invoke
any circumstance
that could demonstrate any rights or legitimate interests in
the domain name).
Respondent is using the <chevronusa.com>
domain name to divert Internet users to a search engine and portal
website. Respondent receives a
commission for the Internet traffic it diverts to this website. This type of behavior is not a bona offering
of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii). See
Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum
Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to
confuse and divert Internet
traffic is not a legitimate use of the domain
name); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck
surfers into a site sponsored
by Respondent hardly seems legitimate”).
Based on the fame of Complainant’s CHEVRON mark, Respondent would be hard
pressed to establish that it is commonly known by CHEVRON
USA or <chevronusa.com>. Moreover, Respondent has submitted no
evidence to demonstrate that it is known by these marks. Thus, the Panel infers that Respondent has
no rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly
known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also Victoria’s Secret v.
Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof
that Respondent was not commonly known by a domain name confusingly
similar to
Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established
use of the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397
(WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one
“would be hard pressed to find a person who
may show a right or legitimate
interest” in a domain name containing Complainant's distinct and famous NIKE
trademark).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers that, given the fame of Complainant’s mark, the Respondent
had actual knowledge of Complainant’s rights when it registered
the <chevronusa.com> domain name. Registration of a domain name, despite
actual knowledge of Complainant’s rights, is evidence of bad faith registration
pursuant to
Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith,
[2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002)
(finding that "[w]here an alleged infringer chooses a mark he knows to be
similar to another, one can
infer an intent to confuse"); see also 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”).
The <chevronusa.com>
domain name is confusingly similar to Complainant’s mark. Respondent is receiving a commission for
every Internet user it diverts to a website located at the <chevronusa.com> domain name. Thus, Respondent is using a confusingly
similar domain name to create consumer confusion for its own commercial
gain. This behavior evidences bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from
its diversionary use of Complainant's mark when
the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent
is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent
registered the domain name <bigtex.net> to infringe
on Complainant’s
goodwill and attract Internet users to Respondent’s website).
Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the
Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chevronusa.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Sandra Franklin,
Panelist
Dated: April 14, 2003
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