WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Phillips 66 Company v. Brian Broaddus / Francis Broaddus
Case No. D2014-1336
1. The Parties
Complainant is Phillips 66 Company of Houston, Texas, United States of America ("U.S."), represented by Reed Smith LLP, U.S.
Respondent is Brian Broaddus / Francis Broaddus of Tulsa, Oklahoma, US, represented by Smakal, Munn & Mathis, PLLC, U.S.
2. The Domain Names and Registrar
The disputed domain names <conocolngexport.com>, <conocolngexport.info>, <conocolngexport.net>, <conocolngexport.org>, <phillips66lng.co>, <phillips66lng.com>, <phillips66lng.info>, <phillips66lng.net>, and <phillips66lng.org> (the "Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 6, 2014. On August 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same day, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and providing contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), 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 Respondent of the Complaint, and the proceeding commenced on August 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2014. The Response was filed with the Center on August 30, 2014. Complainant and Respondent filed supplemental filings on September 4 and 8, 2014, respectively.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on September 9, 2014. 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.
A. Supplemental filings
Both Complainant and Respondent have submitted supplemental filings in this case. The UDRP Rules only provide for the submission of a Complaint and a Response, with no express provision made for additional filings by either party. Paragraphs 10 and 12 of the Rules grant the Panel sole discretion to determine the admissibility of supplemental filings received from either party. The Panel determines that it will admit and consider the Parties' supplement filings in this case to give full expression to their views, explanations and evidence.
B. Request for Consolidation
Complainant has requested consolidation of the disputes involving the Domain Names registered by Brian Broaddus and Francis Broaddus into one case, with evidence that these names correspond to the same person. Respondent has acknowledged that they refer to the same person and thus there is a single Respondent. Respondent does not object to combining cases for the Domain Names containing the name "phillips" in them. However, he states that on April 30, 2012, ConocoPhillips separated its downstream business into a stand-alone company, the Phillips 66 Company. Respondent therefore contends that Conoco is no longer an entity related to Phillips 66, that Complainant lacks authority to act for Conoco, and that the Domain Names containing the term "Conoco" should not be consolidated into this case. In its supplemental filing in reply to Respondent's response, Complainant has explained and submitted supporting evidence to show that when ConocoPhillips spun off its refining arm as the Phillips 66 Company in 2012, it transferred all trademark rights to the CONOCO and PHILLIPS 66 trademarks to Complainant.
Under paragraph 10(e) of the UDRP Rules, the Panel is empowered to consolidate multiple domain name disputes "when doing so promotes the share interests of the parties in avoiding unnecessary duplication of time, effort and expense, reduces the potential for conflicting or inconsistent results arising from multiple proceedings, and generally furthers the fundamental objectives of the Policy." Accordingly, the Panel finds that Complainant is the owner of the CONOCO and PHILLIPS 66 trademark registrations and confirms it is appropriate to consolidate all of the Domain Names into this dispute.
4. Factual Background
Complainant is the owner of more than 400 registrations in the U. S. and around the world for its CONOCO and PHILLIPS 66 trademarks, which Complainant has been using since 1927. For more than 85 years, Complainant and its predecessors in interest have engaged in the world-wide manufacture, marketing, distribution and sale of petroleum products such as gasoline, diesel, jet fuel, lubricants, motor fuels, and other related products and services under the brands CONOCO and PHILLIPS 66. Complainant has developed a network of licensees and sub-licensees, who manufacture, market, distribute and sell authorized products and services throughout the U.S. in approximately 7,500 branded stations. In addition to automotive gasoline and diesel fuel, Complainant produces aviation fuels and markets them through independent marketers and dealers at approximately 900 Phillips 66 branded facilities, which is the largest branded network in the U.S. aviation industry. Complainant is also one of the largest finished lubricant suppliers in the U.S., managing over 18,000 miles of crude oil, raw natural gas liquid, and natural gas and petroleum product pipeline systems.
The Domain Names were registered by Respondent in May 2014.
5. Parties' Contentions
Complainant contends that, aside from the rights derived from its registrations, Complainant has also acquired a substantial reputation under common law by virtue of its extensive advertising of its CONOCO and PHILLIPS 66 marks and its substantially exclusive and continuous use of these marks since 1927. Complainant further states that with more than 13,500 employees, operations in a number of countries, and USD 51 billion in worldwide assets, Complainant has developed a global reputation as a leading energy manufacturing and logistics company with high-performing midstream, chemicals, refining, and marketing businesses.
Complainant maintains that its trademarks are famous and enjoy a worldwide reputation in connection with products and services in the energy manufacturing and logistics industries. Since 1927, when Complainant opened its first service station in Wichita, Kansas, Complainant has spent millions of dollars to promote its products and services using the marks through magazine ads, athletic events, Internet sites and other media outlets. As a result, Complainant states that it has developed significant goodwill and has grown the CONOCO and PHILLIPS 66 names into two of the world's most recognized and well-known brands. In 2013, Complainant's sales and operating revenue was in excess of USD 170 billion, which ranked number four and sixteen on the U.S. Fortune 500 and Global Fortune lists, respectively.
Complainant states that in June 2014, upon discovering Respondent's registration of the Domain Names and linked websites offering them for sale for up to USD 25,000 each, Complainant, through its counsel, sent two letters to Respondent. The letters requested that Respondent indicate whether he had received authorization from any Phillips 66 company employee or representative to register any of the Domain Names. Respondent sent an email response, stating in part as follows:
"Please note I purchased the domains as an individual, not for or on behalf of any business. At the time I purchased the domains, they were owned by the domain registrar or one of its affiliates, not your client or any of its affiliates. Basically, the domain registrar offered to sell the domains to me and I purchased them. At this point, all the domains you identified in your letter, are my property, and will continue to be my property until I either release or sell them."
Complainant states that to the best of its knowledge, Respondent has not developed any business relating to the terms "Conoco" or "Phillips 66," other than websites with sponsored links of competitive companies, the sole function of which is to illicitly profit from the goodwill and reputation of Complainant's marks. Complainant asserts that the Domain Names bear no relationship to any legitimate business of Respondent, nor has Respondent shown any demonstrable preparations to use them in connection with any bona fide offering of goods or services.
Complainant explains that on June 30, 2014, through its counsel, it sent a formal demand letter to Respondent requesting that he either cancel the registrations or transfer the Domain Names to Complainant, on or before July 8, 2014. Complainant states that it provided evidence in its letter that Respondent's registration of the Domain Names infringed upon Complainant's intellectual property rights, and it offered to reimburse Respondent for the costs of registration in exchange for a transfer. However, Respondent neither cooperated with nor responded to Complainant.
(i) Identical of confusingly similar
Complainant states that the Domain Names incorporate Complainant's registered CONOCO and PHILLIPS 66 marks in their entirety, adding the generic terms "LNG" (for "liquefied natural gas") and "Export," which identify an actual raw product and/or one of the core services rendered under the CONOCO and PHILLIPS 66 marks, namely, the exportation and distribution and management of raw natural gas liquid, natural gas, and petroleum products. The Domain Names incorporate the distinguishing characteristics of Complainant's trademarks and, as such, create sufficient similarity between the marks and the Domain Names to render them confusingly similar. Further, a user encountering Respondent's Domain Names is likely to be confused into believing that any websites associated with them are owned by, affiliated with, or sponsored by Complainant. Additionally, because Respondent's sites provide sponsored links to companies with services competitive to those of Complainant, and the Domain Names are expected to attract consumers interested in Complainant's products and services, confusion is likely.
(ii) Rights or legitimate interests
Complainant urges that Respondent has no rights or legitimate interests in the Domain Names. Paragraph 4(c) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by establishing that: (1) prior to the dispute, it used, or made demonstrable preparations to use a domain name in connection with a bona fide offering of goods or services; (2) it has been commonly known by the domain name, even if it has not acquired any trademark or service mark rights; or (3) it 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. Complainant claims that Respondent cannot satisfy any of these factors. The Domain Names bear no relationship to any legitimate business of Respondent, nor has Respondent shown any demonstrable preparations to use the Domain Names in connection with any bona fide offering of goods or services. In fact, to the best of Complainant's knowledge, Respondent has not developed any business relating to or incorporating the terms "Conoco" or "Phillips 66," other than its sponsored links of competitive companies, the sole function of which is to illicitly profit from the goodwill and reputation of Complainant's marks. Nor has Respondent ever been commonly known by the Domain Names. Rather, Respondent has always held himself out to the consuming public either as an individual or BIR Energy Group, Inc.
Furthermore, Complainant contends that Respondent is not making any legitimate noncommercial or fair use of the Domain Names. Complainant notes that it has never licensed nor otherwise permitted Respondent to use its marks or apply for or use any domain names incorporating its marks. Importantly, Respondent has never made any use of the Domain Names or conducted any business activities under the CONOCO or PHILLIPS 66 marks. Respondent's intention to sell the Domain Names for more than their out-of-pocket expenses serves as additional evidence that Respondent lacks rights and legitimate interests in the Domain Names.
(iii) Registered and being used in bad faith
Complainant states that given the fame of its CONOCO and PHILLIPS 66 marks, any use by Respondent of the Domain Names would constitute an infringement of Complainant's trademark rights. Indeed, bad faith can be presumed in that Respondent was aware of Complainant's well-known marks and claim of rights thereto. Yet, even if this presumption does not apply, Respondent has acted in bad faith pursuant to paragraph 4(b)(i) of the Policy by offering to sell the Domain Names for up to USD 25,000 each, a price that significantly exceeds Respondent's out-of-pocket costs for registration of the Domain Names.
Complainant asserts further evidence of bad faith that Respondent has engaged in a pattern of registering more than 400 domain names containing the trademarks of others. A WhoIs search revealed that Respondent has registered and is attempting to re-sell over 400 domain names (for a minimum of USD 15,000 each) containing the marks and/or project names of at least 25 different energy companies, including, for example, BG Group, BP, Canada Stewart Energy Group, Cheniere Energy, Inc., Chesapeake Energy Corporation, Delfin, Devon Energy, Dominion, Energia Costa Azul, Esperanza Energy, Excelerate Energy LP, Exxon Mobil, Fort Chicago Energy Partners LP, Freeport McMoran Inc., H-Energy, Imperial Oil Inc., Kinder Morgan, Kitsault Energy, Pieridae Energy Ltd., Sempra Energy, Sonora Energy Group, Southern Union Company, Triton LNG Limited, and Valero Energy. Complainant argues that a respondent acts in bad faith when exhibiting a pattern of registering and using domain names incorporating third parties' trademarks with intent to profit from consumer confusion. Given these domain names have nothing to do Respondent's business and Respondent is attempting to re-sell each for thousands of dollars, Respondent must be considered a serial cybersquatter, with an intent to prevent trademark owners from reflecting their marks in corresponding domain names (unless they are willing to pay consideration that is well in excess of Respondent's costs).
Finally, Complainant urges that Respondent has acted in bad faith pursuant to paragraph 4(b)(iv) of the Policy by using the Domain Names incorporating Complainant's marks to intentionally attract, for commercial gain, Internet users to Respondent's websites by creating a likelihood of confusion. Complainant's marks are famous and have a worldwide reputation. Respondent has attempted to capitalize on this by purchasing the Domain Names, which have nothing to do with Respondent, and to trade off the goodwill that Complainant has established. In fact, Respondent has solely used the Domain Names to divert consumers from Complainant, and to profit from pay-per-click parking-services that include advertising and sponsored links to competing energy sites.
Respondent maintains that so long as it is not using the Domain Names in bad faith or in direct competition with Complainant, Complainant has no actionable right to obtain them. Respondent thus contends that Complainant's assertion that Respondent has not developed any business relating to or incorporating the terms "Conoco" or "Phillips 66" is irrelevant. Further, Complainant's statement that the Domain Names bear no relationship to any legitimate business of Respondent, and that Respondent has shown no demonstrable preparations to use the Domain Names in connection with any bona fide offering of goods or services, is also irrelevant. Complainant's allegation that Respondent's mere purchase of the Domain Names somehow "infringes upon Complainant's intellectual property rights" is also without merit.
Respondent states that Complainant failed to inform the Panel that Complainant initially demanded transfer the Domain Names without compensation and Complainant never attempted to engage in any type of good faith purchase negotiations with Respondent. Respondent emphasizes that, rather than simply call Respondent and offer to purchase the Domain Names for a fair and equitable price, Complainant has instead chosen to retain legal counsel, expend substantial sums on legal costs, and exert the "full wrath" of a large publicly traded company against Respondent, who is an individual residing in Tulsa, Oklahoma.
(i) Identical or confusingly similar
Respondent contends that the mere fact that the Domain Names incorporate the names "Conoco" and "Phillips", in and of itself, does not demonstrate confusing similarity to Complainant's registered trademarks. Since purchasing the Domain Names, Respondent has not engaged in any attempt to compete with Complainant, nor has he set up any website attempting to hijack any consumer away from Complainant. All Respondent has done is to hold the Domain Names similar to the way the Registrar, Godaddy.com, held them prior to Respondent's registration.
Respondent provides details on the differences between Natural Gas Liquids ("NGL") and Liquefied Natural Gas ("LNG"), indicating this is important because Complainant is not involved in the exploitation, distribution, or management of LNG, the acronym included in five of the Domain Names. LNG involves a sophisticated process that is not performed by Complainant, and Respondent claims LNG is not a generic term. Respondent contends that Complainant is not involved in the manufacture, marketing, distribution or sale of Liquefied Natural Gas (LNG), and not a single trademark of those owned and referenced by Complainant in the Complaint in any way refers to the manufacture, marketing, distribution or sale of LNG. In all likelihood, any consumer looking to do business with Phillips 66 Company is aware that it is not involved in the business of marketing or distributing LNG.
Respondent claims it did not add a "generic term" nor is he involved in any activity that could be construed as attempting to mislead consumers or intentionally attract Internet users to a website for commercial gain. Respondent asserts it would seem logical that a prerequisite to attracting Internet users to a particular website is that Respondent actually develop and use a website. No such website exists. Respondent claims it merely purchased the Domain Names in good faith from the Registrar and is holding them in the same manner as the Registrar did. Respondent states that Complainant could have purchased the Domain Names, but instead it has chosen to spend thousands of dollars accusing Respondent of wrongdoing. According to Respondent, Complainant has no evidence that Respondent engaged in any wrongful acts, nor is there any evidence to support that Respondent does not have the right to own the Domain Names.
(ii) Rights or legitimate interests
Respondent states that it purchased the Domain Names in the same manner that Complainant could have purchased them. Further, Respondent has placed them for sale in virtually the same manner as was used by the Registrar, Godaddy.com. Because Respondent is merely holding the Domain Names for sale, just as the Registrar did before selling them to Respondent, he 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." Consequently, Respondent maintains that Complainant's argument must fail that Respondent has no legitimate rights.
(iii) Registered or used in bad faith
Respondent urges that he did not register the Domain Names in bad faith, nor is he using them in bad faith. At this point, he is merely the owner of the Domain Names, just like the Registrar previously was. The Domain Names contain the specific term "LNG" in them, which is a petroleum process not engaged in by Complainant. Consequently, Respondent's actions are not bad faith.
Respondent asserts that Complainant is acting as a corporate bully. Complainant never had any real intention to negotiate with Respondent to attempt to resolve this matter in a timely and cost efficient way. Instead, Complainant chose to spend shareholder money on legal procedures to "beat Respondent into submission". Respondent does not believe he has done anything wrong and will not "roll over" or bow to a corporate bully as Complainant may have expected he would. Respondent requests that the Panel issue a decision confirming that the Domain Name registrations are properly owned by Respondent.
Complainant's Supplemental Filing
Complainant emphasizes in its supplemental filing that it has well-established rights in its well-known CONOCO and PHILLIPS 66 trademarks. Complainant contends that Respondent conceded in his Response that he has not established any legitimate business in connection with the Domain Names. Further, Respondent has admitted that he is "merely holding the disputed domains for sale", which is conduct that has been found to be bad faith under the Policy and insufficient to establish legitimate rights.
Complainant states that, contrary to Respondent's assertion, LNG is a generic term (acronym) for liquid natural gas. However, LNG is not only a generic term used throughout the oil, gas and energy industries, it is also closely associated with Complainant's gasoline and fuel export activities and raw natural gas liquid and petroleum product pipeline systems. Consequently, consumers would be likely to believe that any of the Domain Names including the "LNG" acronym are associated with Complainant. While Respondent has attempted to dispel the likelihood of confusion by noting technical differences between LNG and natural gas liquids ("NGL"), these differences are irrelevant. Not only are the respective acronyms virtually identical in appearance, but LNG and NGL services are closely related and offered in the same industries. As a result, Respondent's registration and use of the Domain Names including the LNG acronym is likely to cause confusion.
Complainant contends that Respondent's argument, that his purchase and attempted resale of the Domain Names constitutes a legitimate noncommercial or fair use, is also without merit. Complainant states that UDRP panels have held on numerous occasions that use of a domain name that merely offers links to other websites, called parking, is generally not a bona fide offering of goods and services pursuant to the Policy. Similarly, UDRP panels have routinely held that a respondent's failure to associate content with a domain name evinces a lack of rights and legitimate interests. That is the case here. Complainant indicates that Respondent admits that he has no intent to establish or conduct any business in connection with the Domain Names and that he is "merely holding the domains for sale."
Complainant further contends that although Respondent claims he merely purchased the Domain Names and is acting in a manner similar to the Registrar, GoDaddy.com, he fails to recognize that the Registrar sells domain names for a nominal fee, while Respondent is offering the Domain Names for up to USD 25,000 each. This price significantly exceeds Respondent's out-of-pocket-costs for registration of the Domain Names and is conduct that has deemed to be in bad faith. Respondent also ignores that registration alone is presumptive evidence of bad faith where Respondent has actual or constructive knowledge of Complainant's well-known marks. Given the fame of Complainant's CONOCO and PHILLIPS 66 marks, and Complainant's long-standing use of them, Respondent's registration and use of the Domain Names constitutes an infringement of Complainant's trademark rights.
Complainant responds to Respondent's attempt to characterize Complainant as a corporate bully. To begin with, Complainant states that it sent multiple letters to Respondent in an effort to resolve this matter before initiating the current dispute. Not only did Respondent ignore Complainant's request for information, but he expressed no willingness to negotiate. Rather, Respondent stated that "all of the [disputed] domains are my property, and will continue to be my property until I either release or sell them." Given the above, and because Respondent's bad faith registration of the Domain Names threatens the goodwill of Complainant's marks, Complainant was left with no choice but to initiate this dispute. In actuality, it is Respondent who is holding Complainant's intellectual property rights hostage and trying to illicitly profit from the goodwill and reputation of Complainant's marks.
Last, Complainant has submitted evidence in an additional supplemental filing that, although Respondent filed a service mark application for "conocolngexport.com", identical to one of the Domain Names, this application was refused by the USPTO on October 8, 2014 based on likelihood of confusion with Complainant's CONOCO mark.
Respondent's Supplemental Filing
Respondent in its supplemental filing emphasizes that Complainant is attempting to confuse the Panel by commingling various energy products into one basket and calling them the same product. In this case, LNG, LPG and NGLs are all different energy products. Complainant is not involved in any aspect of the manufacture, marketing, distribution or sale of LNG and that is why Complainant has never registered a trademark or domain name incorporating the abbreviation, LNG. If Complainant had any intent to begin manufacturing, marketing, distributing or selling LNG, it would make sense that it would seek to use domain names with the LNG term in them. However, a review of Complainant's Annual Reports and U.S. Security and Exchange Commission filings makes clear that Complainant is not involved with LNG. Although Complainant asserts that the abbreviations for NGL and LNG are "visually identical in appearance", they are not the same product. LNGs are a radically different energy product.
Respondent argues that Complainant's continued position that "LNG" is a generic term results either from a lack understanding of the energy industry or is a flagrant attempt to mislead this Panel. Although Complainant states the use of the term LNG is closely associated with Complainant's energy industry activities, the problem with this argument is that gasoline is made from crude oil, while LNG is not. Respondent agrees that Complainant transports both gasoline and raw natural gas liquids through its pipeline systems. However, Complainant does not transport LNG's through its pipeline system, as that is impossible because LNG is required to be stored in specialized storage tanks. Respondent provides details about the requirements for these tanks.
According to Respondent, although Complainant is trying to convince the Panel that Respondent is planning to link the subject domains to "other websites", this is not true. Complainant is partially correct in stating that Respondent is holding the Domain Names for sale, just as the Registrar did until Respondent purchased them. Respondent emphasizes that Complainant has no evidence that Respondent is acting or using the Domain Names in bad faith. While Complainant states that Respondent is offering to sell the Domain Names for up to USD 25,000 each, Respondent states this is not true. The Domain Names are currently listed for sale on GoDaddy.com's auction site, however, Respondent purchased them from that same site where they are currently listed.
Respondent maintains that while Complainant continues to refer to its well-known CONOCO and PHILLIPS 66 marks and long-standing use of its names, as discussed in the Response, Complainant, in its current form, did not come into existence until April 30, 2012. Consequently, while the CONOCO and PHILLIPS 66 trademarks have been in existence for several years, Complainant did not obtain them until 2012. Furthermore, Complainant does not have any trademarks using the abbreviation LNG because they are not involved in the LNG energy business.
Finally, Respondent states that it is not attempting to paint Complainant as a corporate bully. Rather, Complainant's own actions prove that it is a corporate bully. Respondent's Domain Names all include the abbreviation LNG because Complainant is not now, nor has it ever been, involved in the manufacture, marketing, distribution or sale of LNGs. If Complainant reviewed the various domain name auction sites, it would see that a number of domain names, not containing the LNG term, are available for purchase using Complainant's name, including: <phillips66conoco76comercialcard.com>; <phillips66conoco76gascard.com>; <conoco76phillips66.com>; <conocophillips76.com>. Contrary to Complainant's allegation, Respondent has never proposed that "Complainant...purchase the disputed domains for tens of thousands of dollars." Complainant never made a good faith offer to purchase the Domain Names. Instead, Complainant hired a law firm to send a letter to Respondent initially demanding that he turn over the Domain Names to Complainant for little or no compensation. The allegation that "Complainant sent multiple letters to Respondent in an effort to resolve this matter before initiating the current dispute" is not true. According to Respondent, the only resolution Complainant would accept is complete capitulation by Respondent. Respondent has refused to capitulate. Something that could have been resolved for a minimal amount of money now has cost substantial legal fees, all in an attempt to take Respondent's property without fairly compensating him for it. Finally, the allegation that "Respondent...is holding Complainant's intellectual property rights hostage and trying to illicitly profit from the goodwill and reputation of the CP66 Marks" is simply not true.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Under paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the Domain Names are identical or confusingly similar to Complainant's marks; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Names are identical or confusingly similar to Complainant's CONOCO and PHILLIPS 66 trademarks. Complainant has submitted evidence to show that it owns trademark registrations in the U. S. and elsewhere for its CONOCO and PHILLIPS 66 marks, which have been used in commerce in the U. S. (where Respondent is located) for over 85 years and are well-known within the energy services sector.
Each of the Domain Names incorporates either Complainant's CONOCO or PHILLIPS 66 marks in their entirety. In addition, four of the Domain Names have added the abbreviation "LNG" and the term "export" to Complainant's CONOCO mark, as follows: <conocolngexport.com>, <conocolngexport.info>, <conocolngexport.net>, and <conocolngexport.org>. Regarding these Domain Names, the addition of the additional descriptive terms does not sufficiently distinguish them from Complainant's well-known and distinctive CONOCO mark to overcome confusing similarity. Similarly, the abbreviation "LNG" was added to Complainant's mark, PHILLIPS 66, in the following five Domain Names: <phillips66lng.co>, <phillips66lng.com>, <phillips66lng.info>, <phillips66lng.net>, and <phillips66lng.org>. Here too, the addition of this abbreviation does not sufficiently distinguish these Domain Names from Complainant's well-known PHILLIPS 66 mark to overcome confusing similarity. See Calzedonia S.p.A. v. David Martin Lopez de Ia Oliva, WIPO Case No.. D2013-0972 ("The addition of a generic term does not necessarily distinguish a domain name from a trademark").
Respondent has made much of the claim that Complainant does not engage in the LNG segment of the energy industry and that the abbreviation LNG is not generic. However, this argument misses the mark. The key point is that one of Complainant's CONOCO or PHILLIPS 66 marks is the dominant element in each of the Domain Names, and the added descriptive term or abbreviation does not sufficiently eliminate confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), para. 1.2 ("The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion").
Accordingly, the Panel concludes that the Domain Names are confusingly similar to Complainant's CONOCO or PHILLIPS 66 trademarks.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must next prove that Respondent has no rights or legitimate interests in respect of the Domain Names. A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
In this case, the Panel finds that Complainant has presented a prima facie showing that Respondent has no rights or legitimate interests in the Domain Names within the meaning of paragraph 4(a)(ii) of the Policy. The Panel also finds that Respondent has failed to rebut this showing.
Complainant has demonstrated that Respondent is not commonly known by the Domain Names, nor made legitimate noncommercial or fair use of them. Respondent admits it is offering the Domain Names for sale, which is enough to show that there is no noncommercial or fair use. The Panel also observes that Respondent is not affiliated with or related to Complainant in any way, nor from the available record is Respondent generally known by the Domain Names or authorized by Complainant to use the CONOCO or PHILLIPS 66 marks. Complainant has also offered evidence to show that Respondent has not used the Domain Names in connection with a bona fide offering of goods or services and instead has offered the Domain Names for sale in excess of Respondent's out-of-pocket costs.
In its Response, Respondent argued that it is irrelevant whether or not it has developed any business relating to the terms "Conoco" or "Phillips 66", and that it is also irrelevant whether or not Respondent has shown demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. What Respondent might not fully understand is that these are circumstances which, if shown by Respondent, would have provided a means by which Respondent could demonstrate "rights or legitimate interests" in the Domain Names and therefore defended its registrations in the face of Complainant's claims, pursuant to paragraphs 4(c)(i)-(iii) of the Policy.
As to Complainant's allegations that the Domain Names are linked to parking web pages with links to competitive services, Respondent states that it has not attempted to compete with Complainant, nor set up any website attempting to hijack consumers away from Complainant, and that all Respondent has done is to hold the Domain Names for sale similar to the way the Registrar held them prior to Respondent's registration. The Panel finds there is generally nothing per se illegitimate in selling or dealing in domain names. However, if there is an intention by reason of the sale or threatened sale of a domain name to take advantage of the third party's rights and reputation in a trademark represented in that domain name, that is quite a different matter. Here, Complainant has provided evidence that Respondent has registered numerous domain names incorporating the names and trademarks of various energy companies. It appears that Respondent targeted these names and trademarks when it registered these domain names. The Domain Names in this case fall within this pattern. Moreover, the evidence shows that a number of the Domain Names are listed for sale at prices of USD 25,000 or USD 15,000.
The assessment of rights or legitimate interests in this case boils down to whether Respondent is using the Domain Names with Complainant's marks in mind and with a view to taking unfair advantage of the reputation of those marks. The Panel finds that the answer to these questions is yes. For reasons that are explained in below, the Panel finds that the Domain Names were registered and have been used with a view to taking unfair advantage of the reputation of Complainant's CONOCO and PHILLIPS 66 trademarks.
In the circumstances, the Panel has little difficulty in reaching a positive finding that Respondent has no rights or legitimate interests in the Domain Names. Accordingly, Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. Here, Respondent registered the Domain Names, which are confusingly similar to Complainant's CONOCO and PHILLIPS 66 name and marks, many years after those marks had become well-known. The Domain Names are very specific to Complainant's name and marks, even though they contain also a descriptive abbreviation or word. Respondent has not provided any plausible reason for why it chose the Domain Names, and the Panel cannot think of any reason except that Respondent was targeting Complainant and its marks. Thus, this is not a case in which a third party registered the Domain Names for its own valid reasons or descriptive value. Instead, Respondent was aware that the name and marks of Complainant were incorporated in the Domain Names it registered. In this regard, Respondent is responsible for the legal representations that it made as part of the registration agreement for the Domain Names. Under the Policy, paragraph 2, Respondent represented and warranted that "to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party" and "[i]t is your responsibility to determine whether your domain name registration infringes or violates someone else's rights."
The evidence thus indicates that Respondent registered the Domain Names with Complainant's trademarks in mind and primarily for the purpose of selling them to Complainant or a third party for monetary consideration in excess of Respondent's out-of-pocket expenses. This constitutes bad faith registration and use. Moreover, the fact that the Domain Names also connect to webpages with third-party commercial links, some offering services competing with Complainant, is also evidence of bad faith use. The Panel agrees with those UDRP panels that have found that a registrant cannot disclaim responsibility for the various links on a website linked to a disputed domain name where they are concerned either with the complainant or with the field of commercial activity in which the complainant is a major player. The Panel finds that Respondent is "ultimately responsible for the content of the website generated by domain sponsor's technology." Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; see also WIPO Overview 2.0, paragraph 3.8 (panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content, such as in the case of advertising links appearing on an "automatically" generated basis).
This Panel accordingly finds that for all the foregoing reasons, Complainant has satisfied the third element of the Policy and the Domain Names were registered and used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <conocolngexport.com>; <conocolngexport.info>; <conocolngexport.net>; <conocolngexport.org>; <phillips66lng.co>; <phillips66lng.com>; <phillips66lng.info>; <phillips66lng.net>; and <phillips66lng.org> be transferred to Complainant.
Christopher S. Gibson
Date: October 1, 2014