Chevron Corporation, Chevron Intellectual Property LLC v Ryan Demaris

WIPO Case No. DAI2024-0023

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Chevron Corporation, Chevron Intellectual Property LLC v. Ryan Demaris

Case No. DAI2024-0023

1. The Parties

The Complainants are Chevron Corporation, United States of America (“United States”) and

Chevron Intellectual Property LLC, United States, represented by Demys Limited, United Kingdom.

The Respondent is Ryan Demaris, United States.

2. The Domain Name and Registrar

The disputed domain name <texaco.ai> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2024.

On March 8, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On March 20, 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 (Registration Private / Domains By Proxy, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainants on March 20,
2024, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on

March 21, 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 March 22, 2024. In accordance with the Rules, paragraph
5, the due date for Response was April 11, 2024. The Respondent sent an email communication to the
Center on April 1, 2024, indicating willingness for a settlement. On April 10, 2024, the Complainants
confirmed that they does not wish to settle the matter. The Respondent sent a further email message on
April 10, 2024. On April 16, 2024, the Center notified the Parties that it would proceed to panel appointment.

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The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on April 26, 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 Complainant Chevron Corporation is a multinational energy and technology company headquartered in production and distribution of retail gasoline and diesel fuel, fuel additives, lubricants, and chemicals and the development of alternative energy sources and renewable fuels. In 2001, it acquired Texaco, Inc. and its TEXACO brand. It operates a business website at the domain name <texaco.com>.

The Complainant Chevron Intellectual Property LLC is the Complainants’ group’s intellectual property

holding company and holds registered rights in the TEXACO mark, including the following:

- United Kingdom Trademark Registration No. UK0000420626A for TEXACO (word mark), registered on

November 16, 1921, for goods in class 19; and

- United States Trademark Registration No. 794947 for TEXACO (word mark), registered on August 24,
1965, for services in class 37.

The disputed domain name was registered on December 9, 2023. At the time of this Decision, it did not resolve to an active website. The record contains evidence that it previously resolved to a page featuring

pay-per-click (“PPC”) links related to the Complainant’s business.

5. Parties’ Contentions

A. Complainants

Request to consolidate complainants

The Complainants request consolidation of the proceedings for the following reasons. The Complainants contend they have a specific common grievance against the Respondent, in that the Respondent has

targeted both Complainants’ rights. The disputed domain name takes unfair advantage of the TEXACO

brand of the Complainant Chevron Corporation and is confusingly similar to the registered rights of the prejudiced by the Complaint being brought jointly by both Complainants.

Substantive contentions

The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant Chevron Corporation contends that it was founded in 1879 and is active in over mark in its entirety. The Respondent is not known by the disputed domain name and has no rights in the TEXACO mark. The disputed domain name resolves to a PPC advertising webpage containing third-party commercial advertising links related to third-party energy companies offering competing fuel cards and lubricants. The Respondent has used a privacy service to shield his identity.

180 countries. It is one of the largest companies in the world and the second-largest energy company in the

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B. Respondent

In an email dated April 1, 2024, the Respondent wrote: “I am not sure how to respond to all of this. If I

understand correctly, you are saying that Chevron has the rights to the domain name texaco.ai despite the fact that Texaco did not own the url and it was available for purchase online. If this is true, then I suppose we need to settle this matter. I do not wish to cause a fuss or pursue any legal action. Please let me know

the most reasonable way to proceed.”

6. Discussion and Findings

6.1 Preliminary Issue - Consolidation of Multiple Complainants

Pursuant to paragraph 10 of the Rules:

(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.

(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.

The principles to assess a request to consolidate multiple complainants are set forth in the WIPO Overview

of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1.

The Panel notes the circumstances of the case, in particular the fact that Chevron Corporation owns the

TEXACO brand and Chevron Intellectual Property LLC is the Complainants’ group’s intellectual property

holding company and holds registered rights in the TEXACO mark. The disputed domain name reflects the against the Respondent and the Respondent has engaged in common conduct that has affected the

Complainants in a similar fashion. The Respondent does not challenge the Complainants’ assertions.

Under the circumstances, the Panel finds it would be equitable and procedurally efficient to permit the consolidation.

Accordingly, the Panel accepts the Complainants’ request to consolidate the present proceedings pursuant

to the Rules, paragraph 10(e). The Complainants are hereinafter referred to as the “Complainant”.

6.2 Substantive Issues

Paragraph 4(a) of the UDRP requires the Complainant to make out all three of the following:

(i)        the disputed domain name 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 disputed domain name; and

(iii)      he Respondent has registered and is using the disputed domain name in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and

documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that

it deems applicable”.

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.

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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 entirety of the Complainant’s TEXACO 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 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 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.

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.

At the time of the initial Complaint, the disputed domain name resolved to a site featuring PPC links related

to the Complainant’s business. Under these circumstances, the Panel finds that such use does not establish

rights or legitimate interests. WIPO Overview 3.0, section 2.9.

The Panel notes that the disputed domain name reflects the Complainant’s TEXACO mark in its entirety,

also mirroring the composition of the Complainant’s domain name at <texaco.com>. Such a composition

carries a high risk of implied affiliation with the Complainant and cannot lead to a finding that the Respondent
has rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.5.1.

The evidence does not indicate that the Respondent is commonly known by the disputed domain name nor that the Respondent is making legitimate noncommercial or fair use of it.

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.

In the present case, the Panel notes that the Respondent intentionally attempted to attract, for commercial

gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The

disputed domain name was registered more than 100 years after the Complainant first registered its

TEXACO trademark. The disputed domain name is identical to the Complainant’s mark and therefore

implies a connection to the Complainant. Under these circumstances, the Panel finds that the disputed
domain name was registered in bad faith. WIPO Overview 3.0, section 3.1.

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The Panel finds that the previous use of the disputed domain name to resolve to a website featuring PPC

links related to the Complainant’s business, and redirecting users to the Complainant’s competitors, is an

indication of bad faith use of the disputed domain name. WIPO Overview 3.0, section 3.5.

Further, UDRP Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the current non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness

or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide

any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or

use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0,

section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and long use of the

Complainant’s trademark, and the composition of the disputed domain name, which is identical to the

Complainant’s TEXACO mark, and finds that in the circumstances of this case the passive holding of the

disputed domain name does not prevent a finding of bad faith under the Policy.

The Panel notes that, under the Policy, the availability of the domain name for purchase has no bearing on a finding of bad faith, which is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See WIPO Overview 3.0, section 3.1. Where, as in this case, the

disputed domain name is identical to the Complainant’s mark and the disputed domain name has been used

for commercial purposes, a finding of bad faith is appropriate.

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 <texaco.ai> be transferred to the Complainant Chevron Intellectual Property LLC.

/Ingrīda Kariņa-Bērziņa/

Ingrīda Kariņa-Bērziņa

Sole Panelist
Date: May 10, 2024