Chevron Corporation v. Young Wook Kim

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Chevron

Corporation v. Young Wook Kim

Case No.

D2001-1142

1. The Parties

The Complainant is Chevron

Corporation, whose address is 575 Market Street, San Francisco, California,

U.S.A. The Complainant is represented by Harvey S. Kauget, Esq. of Holland &

Knight LLP, 400 N. Ashley Drive, Tampa, Florida 33602, U.S.A.

The Respondent is Young

Wook Kim, an individual whose address is 224 August Court, Rosyln, New York,

U.S.A.

2. The Domain Name and

Registrar

The domain name in dispute

is <chevron-texaco.com>. The registrar is Network Solutions, Inc. (NSI),

505 Huntmar Park Drive, Herndon, Virginia, U.S.A.

3. Procedural History

This dispute is to be resolved

in accordance with the Uniform Policy for Domain Name Dispute Resolution (the

Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned

Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property

Organization Arbitration and Mediation Center's Supplemental Rules for Uniform

Domain Name Dispute Resolution (the Center, the Supplemental Rules).

The Complaint was filed

electronically on September 18, 2001, and on September 21, 2001, in

hard copy. On September 20, 2001, the Center requested that the registrar NSI

check and report back on the registrant for the domain name <chevron-texaco.com>.

On September 25, 2001, NSI reported to the Center that the registrant was the

Respondent, that the domain name was on active status, and that the registration

agreement was in English and subject to the Policy.

On October 1, 2001, the

Center forwarded a copy of the Complaint to the Respondent by registered mail

and by e-mail and this proceeding officially began. The Respondent did not submit

a response within the 20 day time frame prescribed by Rule 5e, and on October

23, 2001, was declared in default. According to Rule 14a, in the absence of

exceptional circumstances the Panel should proceed to a decision based on the

Complaint.

The Administrative Panel

submitted a Declaration of Impartiality and Independence on November 16, 2001,

and the Center proceeded to appoint the Panel on November 29, 2001.

The Panel finds the Center has adhered to the Policy and the Rules in administering

this Case.

This Decision is due by

December 13, 2001.

4. Factual Background

Complainant owns the trademark

and service mark Chevron, which is registered in the United States. Complainant

has used the Chevron mark throughout the world in connection with motor fuels

for internal combustion engines, lubricating oils and flushing oils.

The Respondent, in default

in this proceeding, is an individual connected with the entity Mediatech, which

sells gas pump display technology for gas stations. The Respondent registered

the disputed domain name, <chevron-texaco.com> on December 5, 1998. There

does not seem to have been any correspondence between the parties before the

Complainant initiated this proceeding seeking transfer of the disputed domain

name, <chevron-texaco.com>.

5. The Parties' Contentions

Complainant's Summarized

Contentions:

- Complainant owns the

trademark and service mark Chevron. Complainant has used the Chevron mark throughout

the world in connection with motor fuels for internal combustion engines, lubricating

oils and flushing oils.

- Complainant has registered

its Chevron mark in the United States. These registrations are currently valid

and subsisting (Complaint Annex B).

- Over the years, Complainant

has invested hundreds of millions of dollars in advertising and promoting the

Chevron mark. As a result, the mark has become famous among the general public

and in particular among users of petroleum products and related goods and services.

- Complainant has developed

valuable goodwill and common law rights in the Chevron mark throughout the United

States and the world. The Chevron mark is distinctive and serves to identify

the source of Complainant's products and services to the consuming public throughout

the United States and the world. Moreover, the Chevron mark distinguishes Complainant's

products and services from the products and services of others.

- Besides owning U.S.

Trademark Registrations Nos. 416,133 and 364,683 for Chevron, Complainant is

in the process of merging with Texaco, Inc. Specifically, on October 16, 2000,

Complainant and Texaco, Inc. announced the merger of the two companies. As such,

Texaco, Inc. also has several United States trademark registrations, including

U.S. Trademark Registrations Nos. 794,947 and No. 57, 902 for Texaco (Complaint

Annex B).

- Consumers readily

associate the Chevron mark with Complainant as the result of its prominent brand

name status in the market place for petroleum products and related services.

The Respondent has chosen to combine two famous registered trademarks using

the exact spelling of each of the two famous registered trademarks. As a result,

the domain name of the Respondent is confusingly similar to the Federally Registered

Trademarks of Complainant and contains Complainant's identical trademark.

- Further, the inclusion

of the top level domain designator <.com> does not help to distinguish

Respondent's domain name from Complainant's mark.

- Complainant has not

licensed Respondent to use its trademark. Respondent does not have any relationship

with Complainant that would entitle it to use Complainant's trademark.

- Respondent's company,

as advertised at the disputed domain name, is Media Tech, which sells display

technologies for gas stations (Complaint Annex F). Respondent is using Complainant's

trademark to aid in the selling of Respondent's gas station displays since Complainant

and Texaco, Inc. have world-wide fame in the gas station industry.

- The <chevron-texaco.com>

domain name was registered in bad faith and is being used in bad faith. The

disputed domain name is being used to attract customers to sell Respondent's

"Ezchanger System" for displays in gasoline pumps (Complaint Annex F).

- Respondent also knew

that by taking control of the domain name, it would interfere with Complainant's

business by diverting potential customers away from Complainant’s websites,

and create among potential customers the mistaken belief that the <chevron-texaco.com>

website is related to the actual website of Complainant.

- Respondent's unauthorized

use of the confusingly similar Chevron mark indicates to the public that Respondent,

his products, and/or his services originate with Chevron, or are affiliated,

connected or associated with Complainant, or are sponsored, endorsed, or approved

by Complainant.

- The Respondent, by

using the disputed domain name, <chevron-texaco.com>, has intentionally

attempted to attract, for commercial gain, Internet users to his website, by

creating a likelihood of confusion with the trademarks of Complainant as to

the source, sponsorship, affiliation, or endorsement of his website.

- The Respondent's use

of the disputed domain name cannot be said to be a legitimate noncommercial

or fair use of the disputed domain name. It is clear that the Respondent's intent

of using the disputed domain name is to misleadingly divert consumers for his

own personal commercial gain.

- The evidence produced

is overwhelming in support of a finding that Respondent registered the disputed

domain name at issue in this matter in bad faith, and continues to use it in

bad faith.

- The disputed domain

name should be transferred to the Complainant.

Respondent's Contentions:

The Respondent is in default

in this proceeding and thus has not filed any contentions.

6. Discussion and Findings

In order for Complainant

to prevail and have the disputed domain name <chevron-texaco.com> transferred

to it, the Complainant must prove the following (the Policy, para 4(a)(i-iii):

- the domain name is

identical or confusingly similar to a trademark or service mark in which the

Complainant has rights; and

- the Respondent has

no rights or legitimate interests in respect of the domain name; and

- the domain name was

registered and is being used in bad faith

Identical or Confusingly

Similar

The Complainant has provided

exemplary copies of a printout from the TESS computerized mark registration

system of the United States Patent and Trademark Office Pincipal Register showing

the Complainant owns the "Chevron" mark registrations no. 0416133 dated August

28, 1945 in international class 4 for motor fuels for use in internal combustion

engines; and "Chevron" mark no. 0364683 dated February 14, 1939 for lubricating

oils and flushing oils (Complaint Annex B).

The disputed domain name,

<chevron-texaco.com>, clearly contains the Complainant's mark. The Panel

is aware that another petroleum company's famous mark, viz. "Texaco", also is

contained in the disputed domain name and that Texaco is not a party to this

proceeding. However, the Panel finds the Complainant nonetheless satisfies the

requirements of the Policy at 4a(i): "your domain name is identical or confusingly

similar to a trademark or service mark in which the complainant has rights.."

In this case, the Panel finds the Respondent's domain name, <chevron-texaco.com>

is confusingly similar to the Complainant's Chevron mark.

Legitimate Rights or Interests

The Complainant contends

the Respondent has no license or permission from the Complainant to use the

disputed domain name. The Respondent is in default and thus has not attempted

to come forward and show any legitimate rights or interests in the disputed

domain name as provided in the Policy at 4c. The Panel thus finds the Respondent

has no legitimate rights or interests in the disputed domain name.

Registered and Used in

Bad Faith

Although the Complainant

makes an en passant argument that the Respondent registered the disputed domain

name in violation of the Policy's bad faith provisions at 4b(iii), the Panel

is not persuaded this is true, i.e., that the Respondent registered the disputed

domain name in order to disrupt the Complainant's business. Certainly, this

does not appear to have been the Respondent's primary motive in registering

the disputed domain name.

On the other hand, the

Panel finds the Complainant's argument and supporting evidence that the Respondent

registered the disputed domain name in order to promote the Respondent's gas

station pump display system,"EZChanger", hits the nail on the head. By adopting

the disputed domain name to promote "EZChanger", the Respondent hoped Complainant’s

famous gas station and related services mark would help sell "EZ Changer"

because potential customers would associate it with the Complainant, Chevron.

This violates the bad faith provisions of the Policy at 4b(iv): the Respondent

has tried to confuse its product with the Complainant for commercial gain.

7. Decision

The Panel has found the

disputed domain name, <chevron-texaco.com>, is confusingly similar to

the Complainant's mark Chevron. The Respondent is in default and has not attempted

to show any legitimate rights or interests in the disputed domain name. The

Respondent registered and was using the domain name in bad faith by attempting

to confuse himself with the Complainant in order to further a business related

to Complainant's business (the Policy at 4b(iv)).

Pursuant to ICANN Policy

para 4(i) and Rule 15, the Panel orders that the disputed domain name, <chevron-texaco.com>,

be transferred from the Respondent, Young Wook Kim, to the Complainant, Chevron

Corporation. The Panel is aware that Texaco might object to Chevron having sole

ownership of a domain name containing both companies' marks. However, the on-going

merger talks between the two companies mean this issue likely is soon to be

moot. And even if the two companies ultimately do not merge, Texaco would have

the same recourse to a proceeding under the Policy or to court action that Complainant

Chevron had in this proceeding.

Dennis A.

Foster

Sole Panelist

December

13, 2001