The Complainant is Chevron Intellectual Property LLC, United States of America (“United States”), represented Dickinson Wright, PLLC, United States.
The Respondent is Mohammadali Mokhtari, Mohammad Ali Mokhtari, Iran (Islamic Republic of) (“Iran”).
The disputed domain names <caltex.ir>, chevron.ir>, and <cygnus.ir> are registered with IRNIC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2020. On August 17, 2020, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain names. On August 18, 2020, IRNIC 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 .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 2, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2020, after the Respondent requested an extension by ten days from the original response due date September 22, 2020. The Response was filed with the Center on October 3, 2020. An unsolicited supplemental filing by the Complainant was sent to the Center on October 13, 2020. Then a further unsolicited response was filed by Respondent on October 19, 2020.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on October 14, 2020. 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 is an integrated energy company headquartered in North America with corporate offices in California, Texas, Pennsylvania, and Louisiana. The Complainant employs over 40,000 company employees and 3,500 service station employees, with refinery operations in California, Utah, and Mississippi. The Complainant conducts business worldwide and has corporate offices, refineries, wells, research, exploration, and distribution networks for gasoline, lubricants and chemicals throughout the world, including the Middle East.
The Complainant has used its principal trademark and name CHEVRON in association with its energy business for many years. Chevron has been used as the Complainant’s corporate name from the 1970’s and its use of the CHEVRON trademark dates back to 1935. The CHEVRON trademark has been widely used in the Complainant’s advertising and promotional materials, including newspapers, magazines and television, for many years. Use of the trademark CHEVRON has also occurred in the Middle East and Africa for a substantial period of time. The Complainant owns over 60 trademark registrations for the mark CHEVRON, including the following:
United States Trademark Registration No. 364,683 for CHEVRON registered on February 14, 1939; and
United States Trademark Registration No. 416,133 for CHEVRON registered on August 28, 1945.
The Complainant also owns international registrations for the mark CHEVRON, including Iranian Trademark Registration No. 66766 registered on April 25, 1957.
The Complainant and its predecessors have used the trademark CALTEX since 1936, in association with its petroleum products and services, primarily lubricants and service stations. The CALTEX trademark has been used and advertised in association with these products and services in countries around the world, including United Arab Emirates, Pakistan, Egypt, Australia, Botswana, Cambodia, Hong Kong, Malaysia, Philippines, Singapore, South Africa, Sri Lanka, Thailand, United Arab Emirates, and Viet Nam. The Complainant owns over 350 trademark registrations and applications for the trademark CALTEX internationally, including the following:
Iranian Trademark Registration No. 3195/4281 for CALTEX registered on August 17, 1947; and
Iranian Trademark Registration No. 3194/4280 for CALTEX registered on August 17, 1947.
The Complainant also owns the trademark CYGNUS which has been used since 1992 in association with engine lubricants, including the following:
Indian Trademark Registration No. 688311 for CYGNUS registered November 27, 1995;
Jordan Trademark Registration No. 37730 for CYGNUS registered April 11, 1995;
Syrian Trademark Registration No. 30238 for CYGNUS registered December 28, 2006; and
Canadian Trademark Registration No. TMA 704,776 for CYGNUS registered January 16, 2008.
The Respondent is alleged to have registered the disputed domain names <cygnus.ir> on October 14, 2019, <chevron.ir> on November 7, 2019, and <caltex.ir> on December 18, 2019, although there is a dispute over the registration dates for the latter two references. At the time the Complaint was filed, the disputed domain names reverted to pages with minimal content.
The Complainant contends that each of the disputed domain names is confusingly similar to the Complainant’s registered trademarks. The Complainant owns registered rights in each of the trademarks CHEVRON, CALTEX, and CYGNUS. The disputed domain names contain the Complainant’s trademarks in their entirety and the addition of the country code Top-Level Domain (“ccTLD”) designation “.ir” does not distinguish the disputed domain names from the Complainant’s registered trademarks.
The Complainant submits that the Respondent does not have any rights or legitimate interests in the disputed domain names. The Respondent must have been aware of the Complainant’s famous trademarks when the disputed domain names were registered. The Respondent was not authorized, licensed or permitted to use the Complainant’s registered trademarks. The Respondent is not commonly known by the disputed domain names. The Complainant is not using the disputed domain names in association with a bona fide offering of goods and/or services. The Complainant submits that the Respondent registered and is using the confusingly similar domain names for the purposes of reselling for monetary gain. The Respondent has a history of targeting trademark owners, as disclosed in prior UDRP decisions.
The Complainant further contends that the Respondent has registered and used the disputed domain names in bad faith. The Respondent has registered the disputed domain names with full knowledge of the Complainant’s registered trademark rights. The Respondent has registered and used the confusingly similar domain names for the purpose of reselling for monetary gain. The Respondent’s history of targeting trademark owners is also probative of bad faith.
The Respondent claims that the disputed domain names have been registered for a number of years as follows:
<chevron.ir> registered on October 21, 2008;
<caltex.ir> registered on December 17, 2008; and
<cygnus.ir> registered on October 14, 2019.
The Respondent also submits that the words CYGNUS, CALTEX, and CHEVRON are widely used by other entities and do not strictly signify the Complainant or its products and services. The words have different meanings in the English language and the Complainant does not have a monopoly on these supposedly generic words. Respondent argues that he was not aware of Complainant’s trademark rights in the terms in question. The Respondent claims he did not target the Complainant for resale of the disputed domain names, but rather it was the Complainant that approached the Respondent. Lastly, the Respondent submits that the Complainant’s trademarks are not well known in Iran, where the Respondent resides, and relies upon the fact that CYGNUS has never been registered as a mark in his jurisdiction.
The Respondent claims that he has begun to create websites and content in association with each of the disputed domain names as follows:
<cygnus.ir> – The Swan – Constellation and Spacecraft
<caltex.ir> – The Calendar Text for Persian Year 1399; and
<chevron.ir> – Order of Zolfaqar – Courage Insignia
In particular, the Respondent points to the weakness of Complainant’s purported rights in the word CYGNUS, and the absence of any use by Complainant of a CYGNUS-formative domain name.
The Respondent claims that the Complainant has engaged in reverse domain name hijacking.
The parties have each filed supplemental submissions in this proceeding. The factual matrix of this case is complex, and a number of issues articulated in the Response raised new matters which required further submissions from the Complainant. In the interests of fairness and to complete the Record, a further response from Respondent was also warranted. Accordingly, in the extraordinary circumstances of this case, the Panel has accepted the supplemental materials from both parties.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Panel finds the Complainant does have registered rights in the trademarks CALTEX, CHEVRON, and CYGNUS.
The Panel finds that the disputed domain names <caltex.ir>, <chevron.ir> and <cygnus.ir> are identical to the Complainant’s trademarks as each disputed domain name incorporates the respective trademark in its entirety. The addition of the ccTLD designation “.ir” does not serve to prevent a finding of confusing similarity between the disputed domain names and the Complainant’s registered trademarks.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
The Complainant relies on the fact that its trademarks are well known around the world, to the point that the marks deserve to be recognized as famous. The Complaint contains a significant amount of evidence relating to the long-standing and widespread use of the CHEVRON and CALTEX marks, not only in association with petroleum-related products, but also as identifiers of Complainant’s business and services, such as service stations, operating in many countries around the world.
The Panel finds for purposes of this proceeding that the trademarks CHEVRON and CALTEX are well-known and indeed famous marks, which ought to be afforded a wide ambit of protection.
Based on the Complaint, and the Complainant’s Further Statement, the third trademark in issue CYGNUS falls into a different category. The Complainant is careful to identify three trademarks in the Complaint as famous: CHEVRON, CALTEX, and TEXACO. Notably it does not identify CYGNUS as a famous mark in the Complaint itself. However, in its Further Statement, Complainant does include CYGNUS in that category, alleging in argument that the disputed domain names “are identical to Complainant’s famous CHEVRON, CALTEX and CYGNUS Marks” (paragraph 4).
The Panel has reviewed the evidence relating to the CYGNUS mark, and notes that it is only described in two short paragraphs in the Complaint and two exhibits. No specific evidence is advanced to demonstrate that the mark is well known or famous. Exhibit P is comprised of 13 trademark registrations from different countries. (The Panel notes this number in contrast to the 650 registrations attributed to the CALTEX mark). Exhibit O shows a few photographs of the CYGNUS mark on labels for brands of engine oil. The evidence is certainly sufficient to support the existence of trademark rights in the brand, but it also reveals that CYGNUS is solely a product mark associated with lubricating oils (not services), and the evidenced use on barrels reveals CYGNUS as a secondary brand, used in combination with the principal trademark TEXACO.
In the circumstances, and based on the evidence filed, the Panel cannot accept the Complainant’s submission that the CYGNUS mark in question is well known.
For purposes of this analysis with respect to rights and legitimate interest, these different findings about CHEVRON and CALTEX on the one hand, and CYGNUS on the other, have important consequences. For the well-known CHEVRON and CYGNUS marks, the Panel is prepared to find that the Complainant has established the absence of rights and legitimate interests on the part of the Respondent. The Panel finds that the Respondent’s claims to be unaware of the trademarks are not convincing. In particular, the CALTEX mark is a coined word, widely used in the Middle East. The fact that the disputed domain names <caltex.ir> and <chevron.ir> were registered in 2008 in quick succession also suggest an awareness of both the Complainant’s brands. The Respondent’s belated attempts to create content on the associated websites in 2020, after having had contact with the Complainant’s representative over a possible purchase, are also not probative of a bona fide intention to use the names for a legitimate purpose.
A different analysis must be made for the disputed domain name <cygnus.ir>. The Respondent denies knowledge of the trademark in question, and brings forward evidence on the following points:
(1) the word “cygnus” is the Latin word for “swan”, and also denotes a specific constellation under that name;
(2) there are multiple users and owners of CYGNUS as a brand for a variety of goods/services;
(3) there is no use or registration of CYGNUS by the Complainant in Iran;
(4) unlike CHEVRON and CALTEX, there is no associated domain name or website for CYGNUS used by the Complainant.
The Respondent also relies on its use of the disputed domain name in association with website content linked to the eponymous constellation. In the Panel’s view, this evidence is not persuasive, in light of its superficial and belated timing.
Weighing all these factors together, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy with respect to the disputed domain names <chevron.ir> and <caltex.ir>. However, for the reasons set out above, the Panel finds that the Complainant has failed to satisfy those requirements with respect to the disputed domain name <cygnus.ir>.
Consistent with the findings in section 6(b) above, the Panel finds that the Complainant has established bad faith, on the balance of probabilities, with respect to the disputed domain names <chevron.ir> and <caltex.ir>. The Respondent’s conduct in registering and using the domain names was abusive, under the Policy. The Panel has articulated its reasoning with respect to the well-known status of the CHEVRON and CALTEX marks, which supports a finding that the Respondent must have been aware of the Complainant’s brands when he first registered the disputed domain names. A number of factors support this conclusion:
(1) the registrations of the two disputed domain names in quick succession;
(2) the fact that both trademarks were undeniably well known;
(3) the fact that the CALTEX mark in particular is a coined word with no meaning other than its brand significance;
(4) the fact that the two disputed domain names <chevron.ir> and <caltex.ir> are comprised of the trademarks in their entirety;
(5) the absence of persuasive evidence on the part of the Respondent to explain its decision to replicate famous marks in the disputed domain names;
(6) the excessive amounts of money sought from the Complainant to purchase the disputed domain names insofar as they are exact matches of the Complainant’s famous marks with no other plausible explanation (had that not been the case, the suggested purchase price would not by itself seem unreasonable);
(7) the belated attempt to populate the Respondent’s associated websites with content that lacked any reasonable connection to the disputed domain names themselves; and
(8) the Respondent’s conduct in four prior domain name decisions.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(iii) of the Policy with respect to the disputed domain names <chevron.ir> and <caltex.ir>. Based on the Panel’s conclusions under section 6(B), it is not necessary for any findings be made in connection with bad faith, with respect to the disputed domain name <cygnus.ir>.
The Respondent raises a complaint of reverse domain name hijacking against the Complainant, arguing that it should have been obvious the proceeding was doomed to failure. The Panel has in fact determined that only the Complaint relating to the disputed domain name <cygnus.ir> will be dismissed.
The question under consideration is whether that part of the complaint can rightfully be considered as Reverse Domain Name Hijacking (“RDNH”). In the Panel’s view, it would not be appropriate to condemn the Complainant’s conduct in this matter. Although the Complaint was partially dismissed, the Complainant did not engage in any conduct which was manifestly improper or indicative of bad faith. Having discovered that the Respondent’s portfolio of domain names included 3 examples of names which were identical to 3 of its trademarks, it was not unreasonable to initiate a Complaint against the Respondent on all counts. The request of RDNH is hereby dismissed.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <chevron.ir> and <caltex.ir> be transferred to the Complainant.
For the foregoing reasons, the Complaint against the disputed domain name <cygnus.ir> is denied.
Christopher J. Pibus
Sole Panelist
Date: November 12, 2020