DECISION

ChevronTexaco Corporation v. Bill Lagna

Claim Number: FA0303000147389

PARTIES

Complainant is ChevronTexaco Corporation, San Ramon, CA (“Complainant”) represented by Mary A. Francis, of ChevronTexaco Corporation.  Respondent is Bill Lagna, Baltimore, MD (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chevron.biz>, registered with Dotster.

PANEL

The undersigned certify that they have acted independently and impartially and, to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.

Mr. David Sorkin, the Honorable Robert T. Pfeuffer (Ret.), and the Honorable Charles K. McCotter, Jr. (Ret.) as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 5, 2003; the Forum received a hard copy of the Complaint on March 6, 2003.

On March 6, 2003, Dotster confirmed by e-mail to the Forum that the domain name <chevron.biz> is registered with Dotster and that Respondent is the current registrant of the name.  Dotster has verified that Respondent is bound by the Dotster 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@chevron.biz by e-mail.

A timely Response was received on April 1, 2003.  Complainant submitted an untimely Additional Response.  Complainant contends that it did not receive Respondent’s Response until after the deadline for filing an additional statement elapsed.  Respondent timely submitted an Additional Statement.  The Panel has considered the Additional Submissions, including Complainant’s untimely Additional Response.

On April 10, 2003, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Mr. David Sorkin, the Honorable Robert T. Pfeuffer (Ret.), and the Honorable James A. Carmody as Panelists.  Judge Carmody recused himself and on April 16, 2003, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) to the Panel.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.  Respondent requests that the Panel deny Complainant’s requested relief and find that Complainant has engaged in reverse domain name hijacking.

PARTIES’ CONTENTIONS

A. Complainant

The domain name <chevron.biz> is identical or confusingly similar to the CHEVRON Mark in which Complainant, Chevron Texaco Corporation, has rights.  Respondent has no rights or legitimate interests in the domain name.  Respondent registered and used the domain name in bad faith.

Respondent has not made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.  Despite the fact that Respondent registered the domain name in dispute on March 27, 2002 – eleven months prior to the filing of this Complaint – the domain name in dispute does not link to an active site.  Respondent has never been commonly known by the domain name.  Respondent is not making a legitimate noncommercial or fair use of the domain name.  Moreover, the domain name in dispute – which is in the <.biz> top level domain – would not be appropriate for such a purpose.  The <.biz> domain has been specifically marketed by Neulevel, the exclusive operator of the .BIZ registry, as being for business purposes.

B. Respondent

Respondent, Bill Lagna, concedes that his domain name is identical to Complainant’s trademark.  However, Respondent contends that confusion will be limited only to first-time visitors.

Respondent argues under Policy ¶ 4(a)(ii) that Complainant’s CHEVRON trademark registrations do not protect Complainant’s mark when it is used for its common or generic purpose.  Respondent states, “The definition of ‘chevron’ is a v-shaped bar on the sleeve of a uniform showing rank.”

Respondent alleges that he has been employed by the U.S. Army since 1985.  Respondent asserts that he registered the <chevron.biz> domain name to establish an Internet presence for the chevron, the official insignia of rank in the United States military.  Respondent argues that the “.mil” top-level domain is not available for public registration, but that there is a significant and increasing public interest in the general topic of the military and the chevron.  Respondent asserts that he intends to use the subject domain name in connection with an information-related website that focuses on the chevron.

C. Additional Submissions

Complainant contends that initial interest confusion is sufficient to show that the domain name is confusingly similar.  Complainant does not dispute the sincerity of Respondent’s interest in the general topic of the chevron, the official insigna of rank in the United States military.  However, Respondent does not have a legitimate interest in the domain name <chevron.biz>.  A registrant is not entitled to use the well-known trademark of another in a way that is likely to cause confusion.  The “Biz Registration Restrictions”of <.biz> require that registrations in the .BIZ TLD must be used or intended to be used primarily for bona fide business or commercial purposes.   Complainant contends that Respondent is holding the domain name primarily for non-business and non-commercial purposes.  Complainant also contends that Respondent is holding the domain name for resale.

Respondent contends that confusion will not result from his use of the domain name as the products are different.  Respondent contends that “chevron” is a generic word.  Respondent claims to have a known and established business and has plans to develop streaming digital video for the website.  Respondent contends that he registered the domain name in good faith.

FINDINGS

Complainant is the owner of the trademark CHEVRON known throughout the world for energy-related goods and services, including vehicle fuels and 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 web site at <chevron.com>.  Complainant owns hundreds of registrations for the trademark CHEVRON throughout the world.  In the United States, 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 mark CHEVRON is prominently displayed on the approximately 8,000 CHEVRON-branded service stations across the United States.

Respondent registered the domain name <chevron.biz> to establish a web presence for the chevron, the official insignia of rank in the United States military.  Respondent has been employed by the U.S. Army since 1985 and, as such, has a real and professional interest in the topic.  Respondent registered the domain name on March 27, 2002 with the intent of making useful information about the chevron, its history and significance available to interested parties.

Respondent was aware that the term “chevron” was a trademark of a number of unrelated companies, among them ChevronTexaco.  Respondent claims that his intended use was fair use of the common and generic word, both in commerce and on the Internet.

Other trademarks incorporate the common word “chevron” and are not affiliated with ChevronTexaco.  Respondent claims that a Google search, revealed over 495,000 references to “chevron.”  Many U.S. companies operate under the mark CHEVRON either alone, or combined with other terms.

Respondent claims that his privately owned company, Lagna Medallion Industries, has been in business for 29 years and is a leading supplier of digital remote video equipment and night vision cameras in the United States.  Respondent also claims to sell various unique and high technology items related to video surveillance.  Respondent says that video streaming chat rooms on <chevron.biz> is a logical extension of those interests, as are his other domain name registrations.  Respondent is employed by the U.S. Army and has an interest in <chevron.biz> as a military history, military interest, video chat and collectible site.

Respondent claims that a significant portion of the site has been developed and includes original and collected articles on the history of the chevron, the significance of the chevron in the military, a complete pictorial listing of all active chevrons presently used in the U.S. military, a pictorial listing of most of the chevrons previously in use but now retired, a history of the various chevrons by service, a listing of related books and other sources on the topic, a daily events page, and a post board.  Not yet developed but under development at the current time is a chat room and email server which permits real-time streaming of voice and video, allowing direct interactive communication of users.  The site is still under construction, primarily due to outside time constraints.

Respondent says that the site is not yet active because aspects are still under development.  The unique, functional engine for live video streaming is still in development.  When it is ready, <chevron.biz> along with several other sites will be brought on-line.  Despite different themes, they will share the same common elements of: general info pages, a white board (for posting for sales and trading of collectibles), a mail server, a search engine, relevant news, and still under development, the streaming video chat server. 

While Respondent has presented evidence of collected articles on the history of the chevron, he has not documented preparations to use or develop the website.

Respondent has registered 32 domain names that are currently sitting idle.

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 numerous trademark registrations worldwide for the CHEVRON mark, which it uses to identify its energy-related goods and services.  More specifically, Complainant holds at least 33 U.S. trademark registrations listed on the Principal Register.  Complainant has used the CHEVRON mark without interruption since at least 1935. The CHEVRON mark is prominently displayed on approximately 8,000 CHEVRON-branded service stations across the United States.  Complainant operates from a website located at <chevron.com>. See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

Respondent’s <chevron.biz> domain name is “virtually identical” to its CHEVRON mark. The  addition of a top-level domain, such as “.biz,” is inconsequential in determining whether a domain name is identical to a mark under Policy ¶ 4(a)(i). See 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); see also ViewSonic Corp. v. Informer Assoc. Inc., D2000-0852 (WIPO Sept. 6, 2000) (finding that the domain names <viewsonic.net> and <viewsonic.org> are identical to Complainant’s VIEWSONIC mark); see also U.S. Patent and Trademark Office Examination Guide No. 2-99, "Marks Composed, in Whole or in Part, of Domain Names," Section I (Sept. 29, 1999) (When a trademark, service mark, collective mark or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.) nor the top-level domain have any source indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

“Respondent may fairly use descriptive or generic terms as a commercial domain name.”  Eastbay Corporation v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002); see also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb Forum Feb. 19, 2001) (Respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”).  The mark “CHEVRON” is a descriptive name in which Complainant cannot have exclusive rights. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,2000).  However, Respondent is not using the domain name <chevron.biz> but has been passively holding the domain for over 11 months.  See HomeFinishers, Inc. v. Tom Schutz, FA 123928 (Nat. Arb. Forum Oct. 10, 2002) (The passive holding of the domain name <homefinishers.com> for over two years without providing any demonstrable plans or preparations to use the domain name fails to show rights or legitimate interests); see also Flor-Jon Films v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name). 

Respondent asserts the intent to use the domain name at some unspecified time in the future.  Respondent has not shown any concrete evidence in support of such plans. See Do The Hustle, LLC v. Tropic Web, supra. (“once the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by concrete evidence that it has rights to or legitimate interests in the domain name at issue. . . . ‘Concrete evidence’ constitutes more than personal assertions.”).  A Respondent’s “unsupported, self-serving allegations alone are insufficient to establish that [the] Respondent has rights or legitimate interests in respect to the domain name at issue.”  Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding the Respondent’s assertion that she registered the domain name <foxstudios.biz> 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); see also Travel in A Moment, Inc. v. F.S. Janco, FA 96821 (Nat. Arb. Forum Apr. 9, 2000) (Respondent failed to show rights or legitimate interests in <momentsnoticetravel.com> where Respondent contended that domain name was registered for future use in connection with an “undisclosed business venture”); see also Camper, S.L. v. DPR USA a/k/a Global DNS Services, FA 118188 (Nat. Arb. Forum Oct. 22, 2002) (Respondent failed to establish legitimate interests in the domain name <camper.us> through mere statement of intent to market campers).  Respondent has only submitted vague and conclusory personal assertions in support of an intent to use the domain name for a business or commercial purpose at some specified time in the future.

Respondent has not submitted any concrete evidence of development of the website for business or commercial purposes.  Furthermore, Respondent’s evidence tends to show an intent to develop a website for non-business and non-commercial purposes.

Respondent’s lack of use or evidence of demonstrable preparations to use the domain name for a legitimate purpose shows a lack of rights in the domain name under Policy ¶¶ 4(c)(i) and (iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when Respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services).

Furthermore, Respondent’s use and registration of the domain name <chevron.biz> violates the .BIZ Registration Restrictions.  The proceeding before the Panel is an UDRP proceeding, not a RDRP proceeding or combined UDRP/RDRP proceeding.  The RDRP allegations have been considered only to the extent they are relevant to the UDRP analysis. 

Registrations in the .BIZ TLD must be used or intended to be used primarily for bona fide business or commercial purposes.  Restrictions Dispute Resolution Policy (RDRP), Paragraph 4(a).  Respondent states that he registered the domain name <chevron.biz>  to provide a website with information about the chevron, its history and significance.  Such intended use is noncommercial.  Respondent’s intended use of the domain name specifically violates the .BIZ Registration Restrictions and the RDRP. 

Since Respondent's intended use of the domain name is noncommercial, Policy ¶ 4(c) (iii) (“ making a legitimate noncommercial or fair use of the domain name”) requires that he actually engage in that use, not merely show demonstrable preparations to do so. See BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where Respondent claimed to be using the domain name for a noncommercial purpose but had made no actual use of the domain name).

Respondent has never been commonly known by the domain name under Policy ¶ 4(c)(ii), as Respondent appears to be an individual, Bill Lagna. 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

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. 

Respondent has passively held the domain name for 11 months since registration. Respondent’s passive holding constitutes bad faith under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name <winegallo.com>).

Respondent acquired 32 domain name registrations in the “.us” domain, none of which resolve to an active website.  Respondent’s pattern of warehousing domain names and the fact that the disputed domain name has not been used in the 11 months since registration, is evidence of bad faith. 

Respondent’s violation of the .BIZ Registration Restrictions, by registering the domain name <chevron.biz> for noncommercial purposes, is evidence of bad faith. See FDNY Fire Safety Education Fund, Inc. v. Roger Miller, FA145235 (Nat. Arb. Forum March 26, 2003); see also Bayer Aktiengesellschaft v. Dangoz & Partners, D2002-1115 (WIPO February 3, 2003).  (“[T]he voluntary breach of the registrar’s Domain Name Services Agreement is evidence of bad faith”).

Respondent argues that its actions satisfy the requirements of good faith registration; see also Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125, "[b]ad faith intent … shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful."  15 U.S.C. §1125(d)(1)(B)(ii).  However, Respondent has not actually made any use of the domain name.

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

Reverse Domain Name Hijacking

Respondent asserts that he provided Complainant with an abbreviated history of the “chevron” and its use in the military via e-mail, but that Complainant intentionally failed to include this communication file as part of the Complaint.  Therefore, Respondent charges that Complainant is misrepresenting the communications between the parties involved in this dispute.  Respondent submits that Complainant’s misrepresentation of information constitutes a willful abuse of the UDRP procedure, and “is indicative of an attempt at reverse domain name hijacking.” See UDRP Rule 1. “Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”  See also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that to prevail on a claim of reverse domain name hijacking, Respondent must show that Complainant brought the claim in bad faith despite the knowledge that Respondent has an unassailable right or legitimate interest in the disputed domain name, or that Respondent lacks the requisite bad faith registration and use of the disputed domain name).  The Panel concludes that Complainant has not engaged in reverse domain name hijacking.

DECISION

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

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

The Honorable Robert T. Pfeuffer (Ret.), Panelist

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: April 24, 2003

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