The Complainant is Exxon Mobil Corporation, Irving, Texas, United States of America, represented by Haynes and Boone, LLP, United States of America (“United States”).
The Respondent is Robert Christian, Tampa, Florida, United States of America.
The disputed domain name <exxonmobil.me> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2008. On August 25, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On August 25, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), as approved by the doMEn d.o.o (“doMEn”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), as approved by the doMEn d.o.o (“doMEn”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 1, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2008. The Response was filed with the Center on September 7, 2008. The Complainant submitted a Supplemental Filing and Supplemental Annex, which were received by the Center by email on September 5, 2008.
The Center appointed William R. Towns as the sole panelist in this matter on September 18, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant 1 is the owner of the marks EXXONMOBIL and EXXON, and is the holder of multiple registrations for these marks in the United States and in other countries around the world. The Complainant also is licensed to use the mark MOBIL, which is registered in the United States to ExxonMobil Oil Corporation, a wholly owned subsidiary of the Complainant. Prior UDRP decisions have recognized the fame of both the EXXON and MOBIL marks.2
The Respondent registered the disputed domain name <exxonmobil.me> on July 9, 2008, in the .ME TLD Land Rush Period following the expiration of the .ME TLD Sunrise Registration Period.3 As indicated in the Response, the Respondent is offering the disputed domain name for sale. This is reiterated in communications between the parties after the filing of the Complaint, in which the Respondent stated that it is his “plan to make a profit by the selling of this domain.”
At the time the Complaint was filed, the disputed domain name resolved to a landing website featuring sponsored links to third-party websites, a number of which market energy-related products or services of the Complainant’s competitors such as Shell Oil and Chevron Oil, or other related products and services, such as credit card services. At present, the disputed domain name does not resolve to an active website.
The Complainant asserts that EXXONMOBIL, EXXON and MOBIL are among the most famous and distinctive marks in the world. The Complainant contends that the disputed domain name <exxonmobil.me> is identical and confusingly similar to its famous EXXONMOBIL mark. The Complainant further maintains that the Respondent has no rights or legitimate interests in a domain name, but instead registered and is using the disputed domain name in a bad faith attempt to profit from and exploit the Complainant’s rights in the mark, through the generation of pay-per-click advertising revenue and by offering the disputed domain name for sale to the highest bidder.
The Respondent asserts rights in the disputed domain name based on his registration of the domain name in .ME TLD land rush, after the Complainant failed to acquire the domain name during the .ME TLD sunrise period. The Respondent argues that if the Complainant had exclusive rights to use EXXONMOBIL for all top level domains it should have been illegal for the registrar GoDaddy.com, Inc. to sell the disputed domain name.
The Respondent acknowledges that the disputed domain name presently is for sale, and maintains that as the legal owner of the domain name he has the right to do so. He asserts that the Complainant is free to make an offer to buy the disputed domain name, and contends that the Complainant instead is wrongfully attempting to hijack the domain name for free. The Respondent notes that the Complainant does not own all top level domains incorporating “exxonmobil”, citing Whois records to <exxonmobil.net> and <exxonmobil.cc>.
No provision in the Policy, the Rules or the Supplemental Rules authorizes supplemental filings by either a complainant or a respondent without leave from the Panel. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties. The Panel notes that the Rules and relevant panel decisions demonstrate a decided preference for single submissions by the parties absent exceptional circumstances, such as when offered to present new, pertinent evidence not reasonably available until after the party’s initial submission. Top Driver, Inc. v. Benefits Benefits, WIPO Case No. D2002-0972. See also Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427. Conversely, a mere longing to reargue the same issues already submitted is not a valid reason for additional submissions. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.
In this instance, the Complainant’s Supplemental Filing directs the Panel’s attention to certain email communications between the Respondent and the Complainant occurring after the filing of the Complainant. The Complainant contends that these communications, which have been submitted by the Complainant in a Supplemental Annex, are indicative of the Respondent’s bad faith. The Complainant alleges that the Respondent initiated contact regarding a possible settlement of the dispute. In response, the Complainant sent Respondent a settlement offer, which the Respondent refused because it did not involve any payment to Respondent for the domain name transfer. In refusing the Complainant’s offer, the Respondent stated as follows: “I plan to make a profit by the selling of this domain. I thought I made that clear to you in my last email.”
Because the Complainant’s supplemental submission concerns new, pertinent evidence that obviously was not available at the time of the filing of the Complainant, the Panel will accept the Complainant’s Supplement Filing and Supplemental Annex. The Panel notes that the Respondent does not dispute that the domain name is for sale, and in fact stated as follows in the Response: “The domain is for sell [sic] which is my choice as the sole owner of such domain. The complainant does have the opportunity and should (if they feel so strongly about it) make an offer to obtain ownership of such domain.”
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002‑0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber‑Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000‑0187. See, Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer are the sole remedies provided to a complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000‑0270.
The Respondent does not directly challenge the Complainant’s rights in the EXXONMOBIL mark, and the Panel finds that the Complainant has established rights in the mark through its registration and use in the United States and elsewhere. Under the Policy the question of identity or confusing similarity is evaluated based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. See, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000‑1525. In this instance, the disputed domain name <exxonmobil.me> is identical to the Complainant’s mark. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is uncontested that the Respondent has not been authorized to use the Complainant’s mark or to appropriate the mark for use with domain names. The disputed domain name is identical to the Complainant’s mark, which is a strong, distinctive and has acquired a significant degree of public recognition. Further, the Complainant has adduced evidence which, if not rebutted, tends to show that the disputed domain name is being used by the Respondent to divert Internet users to a pay-per-click parking website in order to generate advertising revenue, as well as evidence that the Respondent is attempting to sell the disputed domain name for a profit.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to him of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds nothing in the record that would bring the Respondent’s registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy. The Respondent has not been authorized to use the Complainant’s EXXONMOBIL mark or to appropriate the Complainant’s mark for use as a domain name. The Respondent makes no claim to have been commonly known by the disputed domain name. The Respondent does not claim to have registered the disputed domain name in contemplation of any legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy, nor under the circumstances of this case could the Respondent plausibly make such a claim.
To the contrary, the Respondent, having registered a domain name that is identical to the Complainant’s distinctive and well known EXXONMOBIL mark, is offering the domain name for sale, and has announced unequivocally his intent to sell the domain name for a profit. It also appears that the Respondent has used or permitted the disputed domain name to be used with a parking website featuring advertising links to third-party commercial websites. These links serve no apparent purpose other than the generation of pay‑per‑click revenue.
Under the circumstances of this case as described above, neither the use of the disputed domain name to generate advertising revenue nor the registration of the domain name in order to sell it constitutes use in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. It is very clear from the record in this case that the Respondent registered the domain name with the intention of profiting from and exploiting the Complainant’s EXXONMOBIL mark. See Markel Corporation v. Caribbean Online International, Ltd., WIPO Case No. D2007-1537; ACCOR v. Steve Kerry/North West Enterprise, Inc., WIPO Case No. D2006-0649. See also HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007‑0062.
In view of the foregoing, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out‑of‑pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000‑0003. The overriding objective of the Policy is to curb the abusive registration and use of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004‑0230.
The Respondent has no connection with the Complainant, but nonetheless registered the <exxonmobil.me> domain name, appropriating the Complainant’s distinctive and widely known EXXONMOBIL mark. As prior panels have observed, when a domain name is so obviously connected with a complainant and its products or services, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492. See also Paula Ka v. Paula Korenek, WIPO Case No. D2003-0453.
It is clear from the record in this case that the Respondent was well aware of the Complainant and the Complainant’s mark when he sought to register the disputed domain name. The record in this case clearly reflects that the Respondent’s primary purpose in registering the disputed domain name was to sell or transfer the domain name for a profit. Even after being placed on notice of this dispute, the Respondent has unequivocally refused to transfer the domain name to the Complainant except at a profit. In addition, the disputed domain name has been used to drive Internet traffic to a landing site featuring sponsored links to various third-party commercial websites, which the Respondent has not denied generate click-through advertising revenue.
In view the foregoing, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. The Respondent registered the disputed domain name in order to profit from and exploit the Complainant’s mark. Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <exxonmobil.me> be transferred to the Complainant.
William R. Towns
Date: October 2, 2008
1 The Complainant, one of the world’s largest oil companies, was formed in 1999 by the merger of Exxon Corporation and Mobil Corporation.
3 During the .ME TLD Sunrise Registration Period, commencing on May 1, 2008 and ending May 20, 2008, trademark owners could apply for domain names based on trademarks meeting the conditions set forth in paragraph 4(c) of the Sunrise Registration Challenge Policy for a .ME TLD.