1569
Nominet UK Dispute Resolution Service
DRS Number 01569
ChevronTexaco Corporation -v- CPIC Net
Decision of Independent Expert
1. Parties:
Complainant: ChevronTexaco Corporation
Country: USA
Respondent: Syed J Hussain
Country: USA
2. Domain Name:
Chevrontexaco.co.uk
3. Procedural Background:
The complaint was lodged with Nominet both electronically and in hard copy on 26 November 2003. On 1 December 2003 Nominet validated the complaint and wrote to inform the Respondent of the complaint, asking for a response by 23 December 2003. In addition to a posted letter, Nominet faxed the Respondent, and emailed him at two separate email addresses. One email address led to an “undeliverable” message but the other did not.
No response was received from the Respondent. On 29 December 2003 Nominet wrote to the Complainant, saying that the case could now be referred to an independent expert for a decision if the Complainant paid the appropriate fee by 13 January. This letter was copied to the Respondent by post, fax and email.
Following an unsuccessful attempt to pay the fee by credit card, on 12 January 2004 Nominet received the decision fee from the Complainant by wire transfer. The Dispute Resolution Service, however, only became aware that the fee had been paid when at the Complainant’s request it checked the accounts records on 11 February. On 17 February Nominet asked this Expert, Claire Milne, whether she could act in this case. She confirmed that she had no connection with either of the parties and was accordingly appointed.
4. Outstanding Formal/Procedural Issues (if any):
I hope that Nominet will review its procedures, aiming to ensure that the Disputes Resolution Service is aware when payments are received for expert decisions, including payments that arrive from abroad.
5. The Facts:
On 16 October 2000 two major US-based energy and petroleum companies, Chevron Corporation and Texaco Inc, announced their intention to merge, the new company to be called ChevronTexaco Corporation.
On the same day, the Respondent registered the domain name chevrontexaco.co.uk with Nominet through Easyspace Ltd. On 1 December 2003 and on 3 March 2004 the URL www.chevrontexaco.co.uk resolved to a holding page belonging to Easyspace.
On 10 October 2001 the planned merger became effective. The combined company’s main website operates at www.chevrontexaco.com. On 24 June 2003 the company registered the combined trademark CHEVRONTEXACO with the US Patent and Trademark Office, giving the date of first use as 8 April 2002.
6. The Parties’ Contentions:
Complainant:
Rights in the name
The Complainant has rights to the separately registered trademarks CHEVRON and TEXACO in around 140 countries. Registrations took place at various dates, many of them long before the merger. Each mark individually is well known worldwide, through the automobile service stations and other business enterprises conducted under these marks, and also through high-profile sponsorships.
The Complainant has been formally using the combined mark CHEVRONTEXACO since 10 October 2001 and has registered it in the USA for publications. The name has no dictionary meaning and refers only to the Complainant’s products and services.
Abusive registration
Three grounds are put forward for this being an abusive registration.
The date of registration being the same as the date of the merger announcement suggests that the Respondent is an opportunist. The fact that no use appears to have been made of the name in more than three years since it was registered suggests that no legitimate use is intended.
The Respondent has a long record of “poaching” domain names corresponding to others’ well-known names and marks. Six cases are cited (two from Nominet’s DRS and four conducted under the UDRP) which have all been decided against this Respondent.
Respondent:
The Respondent has not responded.
7. Discussion and Findings:
According to section 2 of Nominet’s Dispute Resolution Service Policy, in order to succeed, a complainant must demonstrate two points, each on the balance of probabilities:
· The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name, and
· The Domain Name, in the hands of the Respondent, is an Abusive Registration.
I shall discuss these points in turn.
Complainant’s Rights
The Complainant has provided copious evidence of its rights to the individual marks Chevron and Texaco (a centimetre-thick printout of registration records). However, the Complainant’s formal use of the combined name ChevronTexaco began only a year after the Respondent’s registration of the domain name, and the Complainant’s registration of the combined name was later still.
Section 2 of the Policy refers to a demonstration of the Complainant’s Rights at the present time, and this has been satisfactorily provided. The definition of Abusive Registration in section 1, however, is in terms of unfair detriment to the Complainant’s Rights at an earlier time (the time of registration or use of the domain name). As use of the domain has not been mentioned, the important date for our purpose is the registration date, 16 October 2000.
To establish Complainant’s Rights we need to be clear on two counts:
· Who the Complainant is.
· Whether the Rights relate to a name which is identical or similar to the Domain Name.
On the first count, the Complainant ChevronTexaco has inherited all the rights which on the registration date belonged to Chevron and Texaco. Accordingly, any infringement of Chevron’s or Texaco’s rights then would now amount to an infringement of ChevronTexaco’s rights.
On the second count, the complaint is not explicit whether it is claiming identity or similarity. I shall consider each.
· Identity: The announcement of the planned merger under the combined name could be construed as each of Chevron and Texaco claiming rights to that name, albeit informally. I favour this view.
· Similarity: The combined name could be read as “similar to” either of the individual names, to both of which the Complainant undoubtedly has rights. In the parallel case DRS 800 konicaminolta.co.uk, brought soon after the merger announcement by Konica, which owned the name Konica but not the name Minolta, the expert found that the combined name was similar to its components. Given the distinctiveness of each component name, I find it difficult to regard the combined name as similar to either component, though it is certainly reminiscent of each. Much more important is its exact match with the name of the merged company.
Overall I find that rights to the name have been adequately established. In reaching this view I am also influenced by the following factors:
· There can be no doubt about the ownership of the component names, each of which is well known.
· Neither component name has any generic significance (“chevron” is a dictionary word but one that seems irrelevant in this context).
· It is hard to imagine any application of the combined name which is not intended to refer to the companies in question.
· The registration must have been renewed around October 2002, by which time the Complainant existed and was commonly known by the combined name.
Abusive Registration
Nominet’s Dispute Resolution Policy (1) defines Abusive Registration as a Domain Name which either:
i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights, or
ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.
The Respondent has offered no comment, and as far as I know the domain name has not been used, so I am left to draw what inferences I can from the evidence supplied about the manner in which the registration took place.
The Complainant has drawn attention to the Respondent’s record. Three cases have been found against the Respondent under Nominet’s DRS:
· On 14 June 2000, he registered the name lmeholdings.co.uk (DRS 133)
· On 22 March 2001, he registered the name realarcade.co.uk (DRS 1414)
· On 8 February 2002, he registered capitolrecords.co.uk (DRS 329)
The circumstances of these cases are very similar to one another and also to the present case. In all four, the name in question had been publicised in connection with a new business venture, very soon before the registration took place. In all four, the Respondent has not responded; nor has any use been made of the disputed domain names. In the lmeholdings and capitolrecords cases, there is evidence that the Respondent tried to sell the domain names for amounts well in excess of his expenses.
The obvious inference is that at the time of registration of the domain name, the Respondent was engaged in the business of making speculative domain name registrations in the hope of profit, based in part on reacting quickly to press announcements of forthcoming ventures. Not only is there a clear pattern of abusive registration (mentioned in section 3(iii) of the Policy as a factor which may be evidence of abusive registration), but there is a clear pattern of similar behaviour over a period which points strongly to this, too, being an abusive registration.
I have not examined in detail the other cases cited by the Complainant (conducted under the UDRP), but in general terms the Respondent’s record is well-known, which given the lack of response in this case lends further credence to the Complainant’s argument.
In addition, even without this behavioural pattern, the unique nature of the name chevrontexaco and the timing of its registration would lead me to the conclusion that it was highly probable that the name was registered for speculative gain, taking unfair advantage of the Rights of the Complainant (Policy 3iA). Accordingly, I find that this was an abusive registration.
8. Decision:
The Complainant has Rights in the Domain Name. The Registration took unfair advantage of the Complainant’s Rights. The Registration is therefore Abusive.. As requested by the Complainant, I direct that the Domain Name should be transferred to the Complainant.
Claire Milne
Date:4 March 2004