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WIPO Arbitration and
Diamond Shamrock Refining and Marketing Company v. Diamond Shamrock Capital Group
Case No. D2004-0189
1. The Parties
The Complainant is Diamond Shamrock Refining and Marketing Company of San Antonio, Texas, United States of America, represented by Stumpf Craddock Massey & Pulman of Houston, Texas, United States of America.
The Respondent is Diamond Shamrock Capital Group of Minnesota, United States
2. The Domain Name and Registrar
The disputed domain name <diamondshamrock.com> (the "Domain Name")
is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 11, 2004. On that same day the Center transmitted by email to Network Solutions, Inc., a request for registrar verification in connection with the Domain Name. On March 13, 2004, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 March 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 21, 2004.
The Center appointed Harrie R. Samaras as the sole panelist in this matter
on May 5, 2004. 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,
4. Factual Background
Complainant has used the DIAMOND SHAMROCK service mark in commerce since July 1, 1977,
and has owned United States Registration No. 1,115,399 for the DIAMOND SHAMROCK
service mark since March 20, 1979. The DIAMOND SHAMROCK mark is registered
on the Principal Register of the United States Patent & Trademark Office
("USPTO") in International Class 37, and is used in connection with
gasoline and automobile service station services.
5. Parties' Contentions
The Domain Name is identical to Complainant's registered mark. The DIAMOND SHAMROCK mark and Domain Name are comprised of the same two words: "diamond" and "shamrock." The relevant generic top-level domain part of <diamondshamrock.com> is identical to the DIAMOND SHAMROCK service mark that Complainant owns.
The Respondent does not have any rights in the Domain Name because: (1) Complainant has owned the exclusive right to use DIAMOND SHAMROCK since 1979; (2) Respondent registered the Domain Name in July 2001, more than 22 years after Complainant registered its service mark with the USPTO and approximately 24 years after Complainant first used its service mark in commerce; (3) in the 32 months since registering the Domain Name on July 11, 2001, the Respondent has not created a website -- the Domain Name has been dormant; and (4) even if the Respondent had created a website using the Domain Name, the Respondent's use would not be a bona fide use under Paragraph 4(c)(i) of the Policy.
Respondent registered and used the Domain Name in bad faith because: (1) at the time of registering the Domain Name, Respondent was on constructive notice, if not actual notice, of Complainant's federal registration; (2) in view of the strength of the DIAMOND SHAMROCK mark (e.g., arbitrary mark) that has become distinctive and famous during Complainant's 24 years of continuous use, it is highly probable that Respondent had actual knowledge of Complainant's mark when Respondent registered the Domain Name; (3) there is no evidence Respondent has ever used, or prepared to use, the Domain Name, or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; (4) Respondent has never been commonly known by the name "Diamond Shamrock" and cannot present any credible evidence in support of such a contention; and (5) Respondent's contact information used to register the Domain Name appears to be false.
The Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the panel may draw
adverse inferences regarding those facts. Mary-Lynn Mondich and American
Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques,
WIPO Case No. D2000-0004 (February 16, 2000).
Insofar as Respondent has defaulted, it is therefore appropriate to accept the
facts asserted by Complainant and to draw adverse inferences of fact against
Respondent. Nonetheless, Paragraph 4(a) of the Policy requires that the Complainant
must prove each of the following three elements to obtain an order that a domain
name should be cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant 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
This factor contains two elements: first, does Complainant have rights in a relevant mark and, second, is Respondent's domain name identical or confusingly similar to that mark. The Panel concludes Complainant has satisfied its burden on this factor.
Complainant has been using the DIAMOND SHAMROCK service mark continuously in commerce for 27 years and has owned a federal registration for the mark since March 20, 1979, (Registration No. 1,115,399). Thus, the Panel finds that Complainant has rights in the mark DIAMOND SHAMROCK.
The Domain Name <diamondshamrock.com> is identical to Complainant's
DIAMOND SHAMROCK mark. The use of the ".com" gTLD is irrelevant when
considering the similarity of the Domain Name (which cannot have spaces and
must have a gTLD) to Complainant's mark. See Universal City Studios, Inc.
v. G.A.B. Enterprises, WIPO Case No. D2000-0416
(June 29, 2000); Rollerblade, Inc. v. Chris McCrady, WIPO
Case No. D2000-0429 (June 25, 2000).
For the foregoing reasons, the Panel finds that Policy, Paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy inquires as to whether the Respondent has any rights or legitimate interests vested in the domain name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has been commonly known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name by alleging that: (1) because it has owned the exclusive right to use the DIAMOND SHAMROCK mark since 1979, Respondent cannot have acquired any legal rights in the Domain Name; (2) Respondent registered the Domain Name more than 22 years after Complainant acquired a United States federal trademark registration for DIAMOND SHAMROCK and approximately 24 years after using that mark in commerce; (3) since registering the Domain Name on July 11, 2001, Respondent has not created a website and the Domain Name has been dormant; and (4) even if Respondent had created a website using the Domain Name Respondent's use would not be bona fide under Paragraph 4(c)(i) of the Policy but, rather, Respondent would be trading on the reputation of a well-known mark.
Furthermore, Respondent has never acquired authorization from Complainant
to use its mark and the record fails to establish that Respondent is commonly
known by the <diamondshamrock.com> domain name. See Unisys Corporation
v. Unisys Consulting, LLC., WIPO Case No.
D2004-0138 (April 15, 2004) (finding no rights or legitimate interests
where Respondent was not known by the domain name <unisysconsulting.com>).
Respondent has not responded to the Complaint. Therefore, the Panel may accept
all reasonable inferences and allegations included in the Complaint as true.
See America Online, Inc. and AOL International, WIPO
Case No. D2000-0654 (August 21, 2000) (finding no rights or legitimate
interests where Respondent fails to respond and the Complainant had made out
a prima facie case).
For the foregoing reasons, the Panel finds that Policy, Paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
Respondent has not contested that Complainant has been using, continuously, its DIAMOND SHAMROCK mark in commerce for over 24 years and has held a federal registration for DIAMOND SHAMROCK since 1979. Because Respondent was based in the United States at the time it registered the Domain Name, it was on notice of Complainant's long-standing rights in, and registration of, the DIAMOND SHAMROCK mark. See Bloomberg L.P. v. Boo Design Services a/k/a BNY Bulletin Board, Case No. FA97043 (NAF May 17, 2001) (by legal presumption, respondent was on constructive notice of complainant's rights in the trademark comprising the domain name registered by respondent due to complainant's federal registration of trademark). Thus, the Panel concludes Respondent registered the Domain Name in bad faith.
In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003 (February 18, 2000), the Panel established
that "inaction" can constitute bad faith use, and the Telstra
decision has since been cited for that proposition and followed by subsequent
Panels. See Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO
Case No. D2000-0021 (March 9, 2000; Guerlain S.A. v. Peikang, WIPO
Case No. D2000-0055 (March 21, 2000); Compaq Computer Corp. v. Boris
Beric, WIPO Case No. D2000-0042 (March
28, 2000); Association of British Travel Agents Ltd. v. Sterling Hotel Group
Ltd., WIPO Case No. D2000-0086 (March
29, 2000). Whether "inaction" constitutes bad faith registration and
use depends on the facts in a given case. In this case, the Panel finds Respondent
has used the Domain Name in bad faith because: (1) it is highly probable that
Respondent, based in the United States, knew of Complainant's long-standing
use and registration of the DIAMOND SHAMROCK mark, yet continued to maintain
the Domain Name; (2) there is no evidence Respondent has ever used, or prepared
to use, the Domain Name in connection with a bona fide offering of goods
or services; (3) the contact information Respondent provided in registering
the Domain Name appears to be false information in light of the fact that the
demand letter served by Complainant's counsel, sent via regular United States
mail, was returned with the postal notation "attempted not known,"
and the fax number provided by Respondent is obviously a false number: 999-999-9999
(See WomanBiker.com, LLC v. Wiser Living, Case No. FA97246 (NAF June 27, 2001)
(bad faith found where Respondent provided an incorrect telephone number to
the registrar)); and (4) Respondent failed to respond to the Complaint or to
deny any of its allegations.
For the foregoing reasons, the Panel finds that Policy, Paragraph 4(a)(iii)
has been satisfied.
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 <diamondshamrock.com>
be transferred to the Complainant.
Harrie R. Samaras
Date: May 19, 2004