ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Chevron Corporation and Chevron Intellectual Property LLC v. Domain Privacy, Domain Name Privacy Inc Case No. D2024-3822 1. The Parties The Complainant is Chevron Corporation and Chevron Intellectual Property LLC, United States of America (“United States”), represented by Demys Limited, United Kingdom. The Respondent is Domain Privacy, Domain Name Privacy Inc, Cyprus. 2. The Domain Name and Registrar The disputed domain name (the “Disputed Domain Name”) is registered with Communigal Communications Ltd. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2024. On September 20, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 25, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent (Redacted For Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 25, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 30, 2024. The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 1, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2024.
page 2 The Center appointed Nicholas Weston as the sole panelist in this matter on October 30, 2024. 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 First Complainant is a United States multinational energy company founded in 1879 with operations in more than 180 countries and revenue exceeding USD 240 billion in 2023. In 2001, the First Complainant acquired Texaco, Inc. and its brand TEXACO that goes back to 1902. The Second Complainant is the group’s intellectual property holding company. These entities are referred to in this decision, collectively, as the “Complainant”. The Complainant holds registrations for the trademark TEXACO in numerous countries including United Kingdom trademark Registration No. UK0000420646A for the mark TEXACO, registered on November 16, 1921, and United States trademark registration number 794947 for the TEXACO trademark, registered on August 24, 1965. The Complainant owns the domain name which hosts a website operated by the Complainant. The Disputed Domain Name was registered on July 3, 2024. The Disputed Domain Name currently resolves to a pay-per-click (“PPC”) webpage and has been used to redirect Internet traffic to a variety of unrelated third-party websites apparently selected at random, including a site that makes available potentially harmful software. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. Notably, the Complainant cites a number of trademark registrations for the mark TEXACO, in the United Kingdom and United States, as prima facie evidence of ownership. The Complainant submits that its rights in the mark TEXACO predate the Respondent’s registration of the Disputed Domain Name by more than 100 years. The Complainant submits that the Disputed Domain Name is identical to its trademark, for the reason that the Disputed Domain Name incorporates in its entirety the TEXACO trademark, and that the identicality is not removed by the generic Top-Level Domain (“gTLD”) “.vip”. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because “[t]he Respondent is not a licensee of the Complainants and has not received any permission or consent from either Complainant, collectively or singly, to use their TEXACO mark.” The Complainant alleges that the Disputed Domain Name was used to distribute “so called “scareware” […] a malicious tactic that exploits Internet users' fears by presenting fake antivirus warnings, convincing them to download “protective” software” and to display PPC links. The Complainant also contends that none of the circumstances set out in paragraph 4(c) of the Policy apply. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and the Rules having regard to the prior use and widely-known nature of the Complainant’s trademark, and advances the argument that the use of the Disputed Domain Name to distribute malware and display PPC links is use in bad faith.
page 3 B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Consolidation A complaint is allowed to proceed with multiple complainants against a single respondent where the parties each have standing to file a UDRP complaint. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1 states: “Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.” The Panel accordingly concludes that it is fair and equitable for the Complaint to proceed in the name of both of the Complainants since both Complainants have a common legal interest in the trademark rights on which the Complaint is based and it is procedurally efficient to proceed in a single Complaint. 6.2 Substantive Matters Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a 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. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Name. WIPO Overview 3.0, section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark TEXACO in several jurisdictions. Turning to whether the Disputed Domain Name is identical or confusingly similar to the TEXACO trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark TEXACO; (b) followed by the gTLD “.vip”. It is well established that the gTLD used as part of a domain name is generally disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “texaco”.
page 4 The entirety of the mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is identical to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a Disputed Domain Name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. The Panel finds that the term “texaco” has no ordinary meaning other than in connection with the Complainant. Furthermore, there is no indication that the Respondent was commonly known by the term “texaco” prior to registration of the Disputed Domain Name. The Complainant has not licensed, permitted, or authorized the Respondent to use the trademark TEXACO. The Panel also notes that the composition of the Disputed Domain Name carries a risk of implied affiliation (see WIPO Overview 3.0, section 2.5.1). Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. The Panel notes the evidence that the Disputed Domain Name was used to distribute malware and finds that this does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use. The Panel also notes the evidence that the Disputed Domain Name resolves to a PPC parking page displaying the words “Chevron Gas Station”, “Data Operation Platform”, “Gas Cards for Small Business”, “Lubricant Oil”, Oil Station”, and “Eor Company” (the last being an Employer of Record (EOR) company legally takes on the responsibility of employment matters for another company), and finds that this does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, given the substantial reputation and goodwill of the Complainant’s mark or capacity to otherwise mislead Internet users. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.
page 5 In the present case, the Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, given the well-established rights the Complainant has in its well-known trademark and its identicality to the Disputed Domain Name, the Panel is satisfied that the Respondent knew of, and targeted, the Complainant’s trademark TEXACO when it registered the Disputed Domain Name (see Chevron Corporation, Chevron Intellectual Property LLC v. James Morgan, WIPO Case No. D2023-3065 (“the Complainant is the owner of numerous TEXACO trademarks, which enjoy a worldwide reputation”); Chevron Corporation and Chevron Intellectual Property LLC v. Bmtech Global, WIPO Case No. D2024-0563 (“the Complainants’ well-known TEXACO trademarks”); Chevron Corporation and Chevron Intellectual Property LLC v. ziyab ur rehman , WIPO Case No. D2023-1214 (“the Complainants’ well-known mark”)). This Panel finds that there is no reason for the Respondent to have registered the Disputed Domain Name other than to trade off the reputation and goodwill of the Complainant’s well-known trademark. WIPO Overview 3.0, section 3.1.4. Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) may indicate bad faith registration. In this case, the Respondent registered the Disputed Domain Name some 102 years after the Complainant established registered trademark rights in the TEXACO mark. On the issue of use, the Complainant’s evidence is that the Disputed Domain Name resolved to a website displaying PPC links relating to the oil and gas sector, and the Complainant specifically. Targeting of this nature is a common example of bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. WIPO Overview 3.0, sections 3.1.4 and 3.2.1. Having reviewed the record, the Panel finds the Respondent’s registration and use of the Disputed Domain Name constitutes bad faith under the Policy. The Panel also observes that the Respondent has been the unsuccessful respondent in more than 21 other UDRP proceedings that are easily located by a search of the Center’s public website. See, e.g., Fat Face Holdings Limited v. Domain Privacy, Domain Name Privacy Inc., WIPO Case No. D2024-1602, and Neomarche (Alinea) v. Domain Privacy, Domain Name Privacy Inc , WIPO Case No. D2024-2717). The Panel therefore finds that that the Respondent is a serial offender who deliberately targeted the Complainant and is engaged in a pattern of bad faith conduct that supports a further finding of bad faith against the Respondent (See WIPO Overview 3.0, section 3.1.2). The Panel finds that the Complainant has established the third element of the Policy. 7. Decision 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 Name be transferred to the Complainant. /Nicholas Weston/ Nicholas Weston Sole Panelist Date: November 7, 2024.
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