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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chevron Corporation v. Young Wook Kim
Case No. D2001-1142
1. The Parties
The Complainant is Chevron Corporation, whose address is 575 Market Street, San Francisco, California, U.S.A. The Complainant is represented by Harvey S. Kauget, Esq. of Holland & Knight LLP, 400 N. Ashley Drive, Tampa, Florida 33602, U.S.A.
The Respondent is Young Wook Kim, an individual whose address is 224 August Court, Rosyln, New York, U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is <chevron-texaco.com>. The registrar is Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed electronically on September 18, 2001, and on September 21, 2001, in hard copy. On September 20, 2001, the Center requested that the registrar NSI check and report back on the registrant for the domain name <chevron-texaco.com>. On September 25, 2001, NSI reported to the Center that the registrant was the Respondent, that the domain name was on active status, and that the registration agreement was in English and subject to the Policy.
On October 1, 2001, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began. The Respondent did not submit a response within the 20 day time frame prescribed by Rule 5e, and on October 23, 2001, was declared in default. According to Rule 14a, in the absence of exceptional circumstances the Panel should proceed to a decision based on the Complaint.
The Administrative Panel submitted a Declaration of Impartiality and Independence on November 16, 2001, and the Center proceeded to appoint the Panel on November 29, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by December 13, 2001.
4. Factual Background
Complainant owns the trademark and service mark Chevron, which is registered in the United States. Complainant has used the Chevron mark throughout the world in connection with motor fuels for internal combustion engines, lubricating oils and flushing oils.
The Respondent, in default in this proceeding, is an individual connected with the entity Mediatech, which sells gas pump display technology for gas stations. The Respondent registered the disputed domain name, <chevron-texaco.com> on December 5, 1998. There does not seem to have been any correspondence between the parties before the Complainant initiated this proceeding seeking transfer of the disputed domain name, <chevron-texaco.com>.
5. The Parties' Contentions
Complainant's Summarized Contentions:
- Complainant owns the trademark and service mark Chevron. Complainant has used the Chevron mark throughout the world in connection with motor fuels for internal combustion engines, lubricating oils and flushing oils.
- Complainant has registered its Chevron mark in the United States. These registrations are currently valid and subsisting (Complaint Annex B).
- Over the years, Complainant has invested hundreds of millions of dollars in advertising and promoting the Chevron mark. As a result, the mark has become famous among the general public and in particular among users of petroleum products and related goods and services.
- Complainant has developed valuable goodwill and common law rights in the Chevron mark throughout the United States and the world. The Chevron mark is distinctive and serves to identify the source of Complainant's products and services to the consuming public throughout the United States and the world. Moreover, the Chevron mark distinguishes Complainant's products and services from the products and services of others.
- Besides owning U.S. Trademark Registrations Nos. 416,133 and 364,683 for Chevron, Complainant is in the process of merging with Texaco, Inc. Specifically, on October 16, 2000, Complainant and Texaco, Inc. announced the merger of the two companies. As such, Texaco, Inc. also has several United States trademark registrations, including U.S. Trademark Registrations Nos. 794,947 and No. 57, 902 for Texaco (Complaint Annex B).
- Consumers readily associate the Chevron mark with Complainant as the result of its prominent brand name status in the market place for petroleum products and related services. The Respondent has chosen to combine two famous registered trademarks using the exact spelling of each of the two famous registered trademarks. As a result, the domain name of the Respondent is confusingly similar to the Federally Registered Trademarks of Complainant and contains Complainant's identical trademark.
- Further, the inclusion of the top level domain designator <.com> does not help to distinguish Respondent's domain name from Complainant's mark.
- Complainant has not licensed Respondent to use its trademark. Respondent does not have any relationship with Complainant that would entitle it to use Complainant's trademark.
- Respondent's company, as advertised at the disputed domain name, is Media Tech, which sells display technologies for gas stations (Complaint Annex F). Respondent is using Complainant's trademark to aid in the selling of Respondent's gas station displays since Complainant and Texaco, Inc. have world-wide fame in the gas station industry.
- The <chevron-texaco.com> domain name was registered in bad faith and is being used in bad faith. The disputed domain name is being used to attract customers to sell Respondent's "Ezchanger System" for displays in gasoline pumps (Complaint Annex F).
- Respondent also knew that by taking control of the domain name, it would interfere with Complainant's business by diverting potential customers away from Complainant’s websites, and create among potential customers the mistaken belief that the <chevron-texaco.com> website is related to the actual website of Complainant.
- Respondent's unauthorized use of the confusingly similar Chevron mark indicates to the public that Respondent, his products, and/or his services originate with Chevron, or are affiliated, connected or associated with Complainant, or are sponsored, endorsed, or approved by Complainant.
- The Respondent, by using the disputed domain name, <chevron-texaco.com>, has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of his website.
- The Respondent's use of the disputed domain name cannot be said to be a legitimate noncommercial or fair use of the disputed domain name. It is clear that the Respondent's intent of using the disputed domain name is to misleadingly divert consumers for his own personal commercial gain.
- The evidence produced is overwhelming in support of a finding that Respondent registered the disputed domain name at issue in this matter in bad faith, and continues to use it in bad faith.
- The disputed domain name should be transferred to the Complainant.
The Respondent is in default in this proceeding and thus has not filed any contentions.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name <chevron-texaco.com> transferred to it, the Complainant must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has provided exemplary copies of a printout from the TESS computerized mark registration system of the United States Patent and Trademark Office Pincipal Register showing the Complainant owns the "Chevron" mark registrations no. 0416133 dated August 28, 1945 in international class 4 for motor fuels for use in internal combustion engines; and "Chevron" mark no. 0364683 dated February 14, 1939 for lubricating oils and flushing oils (Complaint Annex B).
The disputed domain name, <chevron-texaco.com>, clearly contains the Complainant's mark. The Panel is aware that another petroleum company's famous mark, viz. "Texaco", also is contained in the disputed domain name and that Texaco is not a party to this proceeding. However, the Panel finds the Complainant nonetheless satisfies the requirements of the Policy at 4a(i): "your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.." In this case, the Panel finds the Respondent's domain name, <chevron-texaco.com> is confusingly similar to the Complainant's Chevron mark.
Legitimate Rights or Interests
The Complainant contends the Respondent has no license or permission from the Complainant to use the disputed domain name. The Respondent is in default and thus has not attempted to come forward and show any legitimate rights or interests in the disputed domain name as provided in the Policy at 4c. The Panel thus finds the Respondent has no legitimate rights or interests in the disputed domain name.
Registered and Used in Bad Faith
Although the Complainant makes an en passant argument that the Respondent registered the disputed domain name in violation of the Policy's bad faith provisions at 4b(iii), the Panel is not persuaded this is true, i.e., that the Respondent registered the disputed domain name in order to disrupt the Complainant's business. Certainly, this does not appear to have been the Respondent's primary motive in registering the disputed domain name.
On the other hand, the Panel finds the Complainant's argument and supporting evidence that the Respondent registered the disputed domain name in order to promote the Respondent's gas station pump display system,"EZChanger", hits the nail on the head. By adopting the disputed domain name to promote "EZChanger", the Respondent hoped Complainant’s famous gas station and related services mark would help sell "EZ Changer" because potential customers would associate it with the Complainant, Chevron. This violates the bad faith provisions of the Policy at 4b(iv): the Respondent has tried to confuse its product with the Complainant for commercial gain.
The Panel has found the disputed domain name, <chevron-texaco.com>, is confusingly similar to the Complainant's mark Chevron. The Respondent is in default and has not attempted to show any legitimate rights or interests in the disputed domain name. The Respondent registered and was using the domain name in bad faith by attempting to confuse himself with the Complainant in order to further a business related to Complainant's business (the Policy at 4b(iv)).
Pursuant to ICANN Policy para 4(i) and Rule 15, the Panel orders that the disputed domain name, <chevron-texaco.com>, be transferred from the Respondent, Young Wook Kim, to the Complainant, Chevron Corporation. The Panel is aware that Texaco might object to Chevron having sole ownership of a domain name containing both companies' marks. However, the on-going merger talks between the two companies mean this issue likely is soon to be moot. And even if the two companies ultimately do not merge, Texaco would have the same recourse to a proceeding under the Policy or to court action that Complainant Chevron had in this proceeding.
Dennis A. Foster
December 13, 2001