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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Standard Oil of Connecticut, Inc. v. Bill West and Gary Sippin

Case No. D2007-0696

 

1. The Parties

Complainant is Standard Oil of Connecticut, Inc., a company with offices in Bridgeport, Connecticut, United States of America, represented by Edwards Angell Palmer & Dodge, LLP, United States of America.

Respondent is Bill West and Gary Sippin, an individual with an address in Monroe, Connecticut, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name, <standardoil.com>, is registered with Tucows, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on May 9, 2007. On May 11, 2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On May 14, 2007, Tucows transmitted by email to the Center its verification response, which confirmed that Respondent is listed as the registrant, provided contact information for the administrative and technical contacts, and confirmed several details of the registration agreement. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2007. The Response was filed with the Center on June 8, 2007.

The Center appointed Debra J. Stanek as the sole panelist in this matter on June 25, 2007. 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.

Subsequently, on June 13, 2007, Complainant, through its counsel, submitted to the Center, by e-mail, a Reply to Respondent’s Response. Complainant submitted the reply because the Response had identified another individual as the “domain name owner” and described Respondent as the “web host.”

In its July 2, 2007 Procedural Order No. 1, the Panel granted Complainant’s request to the extent that it presented new, pertinent facts that had not arisen or responded to arguments or facts that could not have been reasonably anticipated, as of the time that the Complaint was filed. The Panel granted Respondent until July 10, 2007 to file a supplemental submission limited to rebutting or responding to new facts or arguments raised in the Reply. In light of the need to consider the Reply and provide time for a possible submission by Respondent, the Panel found that “exceptional circumstances,” within the meaning of Rule 15(b), warranted an extension of time until July 25, 2007 for forwarding its decision to the Center.

Respondent did not file a supplemental submission.

 

4. Factual Background

Complainant owns several state trademark registrations for the mark STANDARD OIL for petroleum products and distribution of petroleum products. Complainant uses the mark on its trucks and vans.

Respondent registered the domain name <standardoil.com> in 1999. Currently, visitors to the site are presented with links to heating oil companies.

 

5. Parties’ Contentions

A. Complainant

Complainant makes the following contentions:

The disputed domain name is identical to Complainant’s mark. Complainant owns several state trademark registrations for the marks STANDARD and STANDARD OIL for petroleum products and distributing petroleum products. Complainant has used its marks on its trucks for years, beginning some time after the 1930s and has used its mark for more than 50 years in Connecticut. Complainant has spent US $100,000 in advertising to promote its marks, products, and website.

Respondent has no rights or legitimate interests in the disputed domain name. Complainant does not believe that Respondent is known by the domain name or is making fair use of the domain name. According to Respondent’s website at “www.bwi.com,” Respondent is not in the oil or oil heating business.

Respondent does not own a trademark or service mark registration encompassing the <standardoil.com> domain name.

The domain name was registered and is being used in bad faith. Respondent registered the domain name in 1999, long after Complainant had acquired its rights in the domain name.

The “www.standardoil.com” website contains links to Complainant’s competitors.

In response to Complainant’s May 1, 2007 cease and desist letter, Respondent advised that the true owner of the domain name was an individual named Gary Sippin, whose company competes with Respondent.

Complainant has received calls from its customers who report visiting the “www,standardoil.com” website in the belief that it is Complainant’s site and, seeing the services listed, click on links that lead them to competitors. Complainant believes that Respondent is using the site to attract visitors to the site for commercial gain by creating confusion with Complainant and its marks.

Respondent’s site is disrupting Complainant’s business.

Because Respondent registered the domain name after Complainant had used its mark and because Respondent is a competitor located in the same state, Complainant believes Respondent knew of Complainant’s use of the marks at the time if the registration.

B. Respondent

Respondent did not respond to the Complaint. However, another individual, Gary Sippin, submitted a document denominated as the “Response.” In the interests of completeness, the Panel summarized the contentions of that document below:

Sippin concedes that the disputed domain name is “similar” to Complainant’s claimed mark. Sippin contends that Complainant cannot make any valid claims to the term “Standard” because that would “imply that any domain name containing that term could be expected to lead to Complainant’s website.”

Because Complainant’s trademark registrations are state, not federal, registrations, they are not owed the same deference as a federal registration.

STANDARD OIL is descriptive and protectable only if it has acquired secondary meaning. Sippin points to two existing federal trademark registrations that include the term “Standard Oil” and points to the fact that each disclaim exclusive rights to use portions of the mark (“oil” in one case and “oil company” in the other).

Examples of Complainant’s mark as used are all in stylized form.

Sippin contends that Complainant changed its corporate name from “Standard Fuel” and began using “Standard Oil” to trade on the well-known “Standard Oil” companies founded by John D. Rockefeller.

Complainant’s claimed expenditures of $100,000 in advertising over more than 50 years averages $2,000 per year. This is not enough to establish secondary meaning to overcome the association with the Rockefeller companies.

Respondent did not register the domain name in 1999; Respondent acquired the domain name in September 2006.

Respondent has rights or legitimate interests in the domain name.

Sippin is in the oil business and has interests in the use of the term “standard oil”, for example to distinguish “standard” from “premium” oil. Sippin’s rights are equivalent to those of Complainant.

Respondent did not register and is not using the domain names in bad faith.

Sippin could not have been acting in bad faith because Complainant has no enforceable trademark rights.

 

6. Discussion and Findings

A. Procedural Matters

(1) Supplemental Submissions

It is worth noting that neither the Rules nor the Supplementary Rules provide for the filing of submissions other than a complaint and response.

The Panel is of the view that supplementary submissions are appropriate only in exceptional cases for reasons that may include the existence of new, pertinent facts that did not arise until after the party’s submission or the need to bring new, relevant legal authority to the attention of the Panel. To seek or accept supplemental submissions under other circumstances undercuts the purpose of the streamlined procedures established by ICANN.

The Panel has considered the facts and circumstances of this case and finds that they warrant the consideration of parts of Complainant’s submission. The Panel considers Complainant’s submission to the extent that it:

(a) objects to the filing of the “Response” by Sippin, who is not the named Respondent,

(b) requests that the Panel proceed to decision without considering Sippin’s filing, and

(c) argues that Sippin, a competitor of Complainant, had actual knowledge of Complainant and its marks.

(2) Submissions by Person other than Respondent

A “Respondent” is “the holder of a domain-name registration against which a complaint is initiated.” See Rules, paragraph 1, s.v. “Respondent.” Based on the record, it appears that the Complaint correctly named as Respondent, Bill West, the registrant of record for the disputed domain name.

The purported Response does not comply with paragraph 5(b)(ii) of the Rules, which requires Respondent to provide contact information for itself and for “any representative authorized to act for the Respondent in the administrative proceeding.”

As noted above, the above-named Respondent, Bill West, did not file the Response. Nor did he designate any other person to act as his authorized representative in this proceeding. Instead, the Response was apparently prepared by, and is digitally signed by, Gary Sippin, who added his name to the caption as “Domain Name Owner.” The text of the document identifies Respondent as Bill West and further states that Respondent’s authorized representative is Bill West.

Pursuant to its discretion under paragraphs 10 and 14(b) of the Rules, the Panel finds that while Gary Sippin is not technically a “respondent” within the meaning of the Policy, he is responsible for, or the beneficial holder of, the domain name at issue. Accordingly, the Panel refers to both Bill West and Gary Sippin as “Respondent” throughout and declines to find that Respondent is in default.

B. Burden of Proof

In order to prevail, Complainant must prove:

(i) That the disputed domain name is identical or confusingly similar to Complainant’s mark; and

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

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

Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a Respondent’s rights or legitimate interests in a domain name (see Policy, paragraph 4(c)), as well as circumstances that may evidence a Respondent’s bad faith registration and use (see Policy, paragraph 4(b)).

C. Identical or Confusingly Similar

As an initial matter, the Panel finds that in this case the provided evidence of state trademark registrations does not – standing alone – establish Complainant’s rights in the STANDARD OIL mark for purposes of these proceedings. Consistent with the consensus view, the Panel finds that United States state registrations, which are not subject to the same level of scrutiny as federal trademark registrations, and may in some states be granted automatically, are not entitled to the same deference that a federal trademark registration. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.1.

Notably, Complainant has not provided evidence regarding such matters length of use and amount of sales, the nature and extent of its advertising, consumer surveys, or media recognition that would go to proving its trademark rights in an unregistered mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.7 (setting out consensus view as requiring complainant asserting rights in unregistered trademark rights to show that the mark has become a distinctive identifier associated with complainant or its goods and services, such as by providing evidence of length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition).

Indeed, apart from its state trademark registrations, Complainant has provided very little in the way of evidence establishing its rights, making this a close question. The documentary evidence consists of photographs of trucks and vans bearing the term and a photograph of a sign outside Complainant’s offices. The Panel gives little weight to the vague and unsupported assertions of Complainant’s counsel. On balance, however, the state trademark registrations, which include some specimens showing use of the mark, in combination with the photographs and Complainant’s “www.standardoil.net” website evidence Complainant’s use of and rights in its mark.

The disputed domain name is identical to Complainant’s mark. For these purposes, the lack of a space between “standard” and “oil” and the “.com” top-level domain is not relevant.

Accordingly, the Panel finds that Respondent’s domain name is identical to a mark in which Complainant has rights.

D. Rights or Legitimate Interests

The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain names by making a prima facie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).

First, it does not appear that Respondent was making a bona fide use of the domain name before notice of the dispute. As noted above, the disputed domain name is confusingly similar to Complainant’s mark. Visitors are presented with links to Complainant’s competitors. Under the circumstances presented here, the Panel does not believe that such use is bona fide.

Second, it does not appear that the disputed domain is the legal name of or is commonly used to identify Respondent.. The unsupported contentions in the “Response,” many of which purport to cast doubt on Complainant’s motives and rights in its mark, do not establish rights or legitimate interests on the part of the Respondent.

Third, it does not appear that Respondent is making a legitimate non-commercial or fair use of the domain name. In this regard, it is important that Respondent’s web site does not, as Respondent suggests, use the phrase “standard oil” in its primary sense, for its ordinary English meaning, to distinguish it from “premium oil.” Further, the available evidence strongly suggests that Respondent is using the domain names to reroute visitors who are seeking Complainant’s site.

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

E. Registered and Used in Bad Faith

Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith (see Policy, Paragraph 4(b)(i)-(iv)):

(1) registering the domain name primarily to sell it for more than documented out-of-pocket costs; or

(2) registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct; or

(3) registering the domain name primarily to disrupt the business of a competitor; or

(4) using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement.

The Panel finds that Respondent’s conduct falls within paragraph 4(b)(iv).

Under these circumstances, the Panel finds that Complainant has established that Respondent has registered and used the 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 <standardoil.com> be transferred to Complainant.


Debra J. Stanek
Sole Panelist

Date: July 25, 2007

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-0696.html

 

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