Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ExxonMobil Oil Corporation v. Gioacchino Zerbo

Case No. D2008-0046

1. The Parties

The Complainant is ExxonMobil Oil Corporation, United States of America, represented by Haynes and Boone, LLP, United States of America.

The Respondent is Gioacchino Zerbo, Italy.

2. The Domain Name and Registrar

The disputed domain name <mobileoil.com> is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2008. On January 14, 2008, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On January 14, 2008, Dotster, 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”), 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 the Respondent of the Complaint, and the proceedings commenced on January 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2008.

The Center appointed Adam Samuel as the sole panelist in this matter on February 13, 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.

4. Factual Background

The Complainant is a petroleum company and owns US trademark registrations 1020511,0337002, 1015027, 73033448, 73071063, 74364757 and 1048286 for the mark MOBIL, 1044603 for MOBIL 1 and 2271750 MOBIL SPEEDPASS-THE FASTEST WAY TO GET GAS.

5. Parties’ Contentions

A. Complainant

These are the Complainant’s submissions with which the Panel does not necessarily agree.

The Complainant submits that it owns the well-known trademarks MOBIL, MOBILOIL, MOBIL 1 and SPEEDPASS covering petroleum and petrochemical products and related services. In 1999, Mobil Corporation became a wholly-owned subsidiary of Exxon Corporation and Exxon Corporation changed its name to Exxon Mobil Corporation. The Complainant, or its predecessors in interest, started using the mark MOBILOIL in connection with lubricant oils in 1904 and has actively promoted the brand MOBIL through advertising in a variety of media for decades. The Complainant is the registrant of domain names <mobil.com>, <mobil1.com> and <mobiloil.com>.

The domain name incorporates the Complainant’s well-known and distinctive trademark MOBILOIL in its entirety. It is identical to that name except for the addition of the letter “e”. The domain name also combines the MOBIL marks with “oil”, a product offered under the Complainant’s marks.

The Complainant contends that the Respondent does not own a trademark registration for the marks MOBILEOIL, MOBILOIL, MOBIL or MOBIL1, is not known by the name MOBILEOIL, does not operate a business or other organization under the name MOBILEOIL and is not otherwise authorized to use the mark MOBIL.

The domain name resolves to a commercial link farm website. That is not a bona fide offering of goods or services capable of giving rise to a right or legitimate interest in the domain name.

The Respondent’s purpose and use of the domain name is to confuse and divert customers to its site in order to aggregate advertising revenue through the use of sponsored links as well as to potentially sell the domain name of the highest bidder. In view of the fact that the Complainant’s mark is world-famous, it is virtually impossible that the Respondent could demonstrate any legitimate use of the domain name.

The Complainant submits that prior acts of cybersquatting support a finding of bad faith in the Respondent’s registration of domain name. The Respondent has knowingly registered numerous domain names incorporating famous marks and has been the respondent in a number of successful proceedings brought under the UDRP.

The Respondent uses the domain name to provide links to websites that sell competitive products and services to those offered by the Complainant. Consequently, consumers searching for information concerning the Complainant are likely to become confused as to whether the Respondent is affiliated or associated with or sponsored or endorsed by the Complainant.

Finally, the Complainant contends that the Respondent is trading off the worldwide fame of the MOBIL marks in the domain name to divert Internet traffic to promote sites competitive to the Complainant to aggregate advertising revenue. It does this knowing of the Complainant’s rights.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, the Complainant must prove that

(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The one trademark registration for the name MOBIL OIL, 71384102 of which the Panel has evidence gives the last listed owner as Mobil Oil Corporation. In the light of the general name changes within the Mobil group in 1999, it seems highly likely that the Complainant is the same company or a successor to it. The Complainant anyway has numerous trademark registrations in the USA and elsewhere for MOBIL. The additions of the letter “e” and the generic word with which the trademark MOBIL is most closely associated represent the only differences between the domain name and the MOBIL trademark. This appears to be a classic case of “typosquatting”.

In Sierra HealthStyles LLC v. Modern Limited -Cayman Web Development, WIPO Case No. D2006-0020, the Panel said on this subject:

“Here, the domain name has two differences from Registration No. 2152729 and the key element of the other two registrations: the addition of the .com suffix and the substitution of “i” for the first “a” in the trademark.

[…]

“The substitution of the “i” for the first “a” is visually apparent on close inspection. The domain name and the trademark, MIRAVAL, however, are phonetically similar. There are various ways that both versions of the word may be pronounced and some of these will or may sound the same or similar. The word element of the domain name created by the substitution of the “i” for the “a” is not a plain English word or otherwise generic. There are likely to be circumstances where a person might unintentionally type in the domain name instead of the trademark term, particularly having regard to imperfect recollection and the potential for persons using the Internet to “guess” at domain names. In these circumstances a finding of confusing similarity in line with the “typosquatting” cases is appropriate. See e.g. AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937; America Online, Inc. v. Johuathan Investments, Inc. and AOLLNEWS.COM, WIPO Case No. D2001-0918; and Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.

“Consequently, the Panel finds that the disputed domain name is at least confusingly similar to the Complainant’s registered trademark rights.”

Here, the addition of the letter “e” does not affect the sound of the domain name. It does not render the domain name significantly less similar to the trademark name. Indeed, the addition of the word “oil” which is so commonly associated with the trademark concerned confirms the similarity between the domain name and the trademark. For these reasons, the Panel concludes here that the domain name is confusingly similar to the Complainant’s registered trademark, MOBIL. If it owns the registration for MOBIL OIL which seems highly likely, the Complainant can also show that the domain name is confusingly similar to that trademark. The difference between the domain name and the trademark would just be the addition of the letter “e”.

B. Rights or Legitimate Interests

The Respondent is not called ‘Mobile’ and does not appear to trade under that name. There is no evidence that the Complainant has authorized it to use any of its trademarks. The Respondent has never asserted any rights or legitimate interests in the name. For these reasons, on the basis of the case file, notably the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

The disputed domain name was originally registered by a Mr. Dinoia. The Complainant wrote to Mr. Dinoia about the subject-matter of its Complaint on October 24, 2007. Mr. Dinoia’s lawyer responded by offering the domain name for sale in exchange for his out-of-pocket expenses. Dinoia then transferred the registration to the Respondent. It is the Respondent’s registration with which the Panel is concerned.

The Complainant’s name is known worldwide and certainly in Italy where the Respondent is located. It is difficult to understand the appeal of the disputed domain name in isolation from the fact that the various Exxon Mobil corporations and oil have a long association. In the absence of a response, the Panel concludes that the Respondent knew what he was registering: a website combining the name of a very well-known US corporation and its best known product. He must have known that this would involve infringing a trademark belonging to the Complainant.

In this particular case, the website to which the domain name resolves confirms this by its references to “Mobile and Chevron Oil”. Anyone aware of Chevron Oil, another common brand of oil in the USA will be aware of the Complainant and its association with oil products. Further reinforcement comes from the fact that the Respondent appears to have been the unsuccessful Respondent in a number of other WIPO UDRP cases, notably Yamaha Motor Corporation, USA v. Gioacchino Zerbo, WIPO Case No. D2007-1879, Deutsche Bahn AG v. Giocchino Zerbo, WIPO Case No. D2007-1490, Premier Farnell PLC v. Gioacchino Zerbo, WIPO Case No. D2007-1208, Whirlpool Properties, Inc. and Whirlpool Corporation v. Gioacchino Zerbo, WIPO Case No. D2006-0549, Microsoft Corporation v. Gioacchino Zerbo, WIPO Case No. D2005-0644.

Typo-squatting is further evidence that the Respondent has registered and been using the domain name in issue in bad faith. This conclusion is supported by the view expressed in Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568:

“Typosquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter “intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source” of the website.”

Finally, the website to which the domain name resolves promotes the products of at least one of the Complainant’s competitors, Chevron. The Panel in Banca di Roma S.p.A. v. Unasi Inc. a/k/a Domaincar, WIPO Case No. D2006-0068, agreed that this type of behaviour constituted bad faith. It said:

“The Respondent is linking the disputed domain name to a portal site offering sponsored links. There, Internet users have access to a variety of goods and services, among them websites of the Complainant’s competitors. As described by the panelist in Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584, such websites offer a revenue program which pays domain name owners (in the particular case) “50% of all revenues generated from searches, popunders, popups, and exit popups” in respect of users directed to its website through the participants domain name.

“This leads the Panel to the conclusion that the Respondent registered the domain name at issue to divert Internet users seeking information about the Complainant’s products to a portal site offering sponsored links and to share in revenues obtained from the diverted traffic. Even if internet users would realize that the Respondent’s website is not connected with the trademark owner, the Respondent is liable to profit from their initial confusion, since they may still be tempted to click on sponsored links. In many previous UDRP decisions, in some of them the Respondent was involved as a respondent party as well, such exploitation of trademarks to obtain click-through commissions from the diversion of internet users was held of use in bad faith … In the absence of any reply of the Respondent, the Panel can make a reasonable inference that the Respondent’s website generates revenue for the Respondent in that manner.”

For all the above reasons, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

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, <mobileoil.com> be transferred to the Complainant.

Adam Samuel
Sole Panelist

Dated: February 27, 2008