GridPoint, Inc. v. Matt Giovanini
Claim Number: FA2008001909399
Complainant is GridPoint, Inc. (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is MATT GIOVANINI (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gridpointenergy.com>, registered with FastDomain Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Lars Karnøe as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 20, 2020; the Forum received payment on August 20, 2020.
On August 20, 2020, FastDomain Inc. confirmed by e-mail to the Forum that the <gridpointenergy.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gridpointenergy.com. Also on August 26, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 15, 2020.
An additional submission by Complainant was received and determined to be complete on September 17, 2020. From the documentation available to this Panel the Additional Submission does not comply with Supplemental Rule 7(b)(ii) and (iii), and will be disregarded.
On September 21, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lars Karnøe as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s business was founded in 2003, and offers services in smart building technology industry. Complainant has rights in the GRIDPOINT mark through its registrations with numerous trademark agencies throughout the world. (e.g. United States Patent and Trademark Office (“USPTO”) Reg. 3,320,099, registered Oct. 23, 2007; Canadian Intellectual Property Office (“CIPO”) Reg. TMA 859,311, registered Sep. 5, 2013). See Compl. Ex. 8. Respondent’s <gridpointenergy.com> domain name is confusingly similar to Complainant’s GRIDPOINT mark as it incorporates the mark in its entirety and adds the word “energy”, along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights in the <gridpointenergy.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized or licensed Respondent to use its GRIDPOINT mark in the disputed domain name. Respondent has failed to provide proof that it was commonly known by the name “Grid Point Energy LLC” before it registered under that name in 2017. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent attempts to pass off as Complainant to divert internet users to the disputed domain name’s resolving website, where Respondent offers services that compete with Complainant’s business.
Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to disrupt Complainant’s business for commercial gain by passing off as Complainant to divert internet users to the disputed domain name’s resolving website, where Respondent offers competing services. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the GRIDPOINT mark. Respondent registered the disputed domain name with opportunistic bad faith by immediately using its registration of the disputed domain name to try and leverage a “strategic Partnership” with Complainant.
B. Respondent
Respondent argues that it is an energy broker whose business does not relate to or compete with Complainant’s business in any way, and that any mention of technology on its website is incidental to its online procurement service. Respondent argues that Complainant is attempting to portray the facts of the situation in a broad way that portrays Respondent as one that in bad faith competes with Complainant and attempting to steal Complainant’s customers. Respondent denies this characterization, and argues that its use is unrelated to Complainant’s smart building and automation business. Therefore, Respondent has rights and/or legitimate interests in the disputed domain name, and does not use the disputed domain name in bad faith.
The disputed domain name was registered on December 11, 2016.
The Complainant holds common-law and registered rights in the GRIDPOINT <word> and GRIDPOINT <device> trademarks in the U.S., Canada and EU for a variety of goods and services related to energy management and monitoring. These rights dates to at least 2005.
Secondly the disputed name was registered in December 2016 long after the priority dates of the Complainant’s trademarks.
Finally, the Respondent does not dispute that the Respondent was fully aware of the GRIDPOINT trademarks when registering the disputed domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims rights in the GRIDPOINT mark through its registration numerous trademark agencies throughout the world. (e.g. USPTO Reg. No. 3,320,099, registered Oct. 23, 2007; CIPO Reg. No. TMA 859,311, registered Sep. 5, 2013). Registration with the USPTO and CIPO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See THE TORONTO-DOMINION BANK v. Lhhon Hoy / Kathleen Kim / Grt Fyo / Leon Ho, FA 1724017 (Forum May 17, 2017) (finding registrations with the USPTO and CIPO are satisfactory demonstrations of Policy ¶ 4(a)(i) rights). Therefore, the Panel finds that Complainant has rights in the GRIDPOINT mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <gridpointenergy.com> domain name is confusingly similar to Complainant’s GRIDPOINT mark, as it incorporates the mark in its entirety and simply adds the generic word “energy”, along with the “.com” gTLD. Adding a word that relates to the Complainant’s business, along with the “.com” gTLD are generally insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The disputed domain name incorporates the GRIDPOINT mark in its entirety, and adds the word “energy” along with the “.com” gTLD. Therefore, the Panel finds Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
In conclusion the Panel find under Policy ¶ 4(a)(i) that Complainant has rights in the GRIDPOINT mark, and Respondent’s disputed domain name is confusingly similar to Complainant’s marks.
In the view of the Panel Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden then shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights or legitimate interests in the <gridpointenergy.com> domain name, as Respondent is not commonly known by the disputed domain name, and Complainant has not authorized or licensed Respondent to use the GRIDPOINT mark in the disputed domain name. WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The WHOIS of record identifies Respondent as “Matt Giovanini”. Therefore, and as no other evidence to the contrary has been presented by the Respondent, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent has failed to submit supporting evidence to demonstrate that its business was commonly known by the <gridpointenergy.com> domain name before it registered as a business under the name “Grid Point Energy LLC” in 2017. Under Policy ¶4(c)(ii), where a Respondent fails to submit additional evidence to show it is and has been commonly known by a disputed domain name, past Panels have held that Respondent may not be commonly known by that name. See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected). Complainant argues that even though Respondent registered as a business known as “Grid Point Energy LLC” in 2017, this business registration was after Complainant established rights in the GRIDPOINT mark, and Respondent provides no proof that it was commonly known by the disputed domain name before 2017. Complainant further argues that Respondent’s business registration is irrelevant because simply registering a business name is not enough to establish a defense under Policy ¶ 4(c)(ii). Complainant cites Royal Bank of Canada v. RBC Bank, Case No. D2002-0672 (WIPO Nov. 20, 2002), which held that “mere registration of the company, without more, is not enough to demonstrate that Respondent was commonly known by the domain name.” The Panel finds that Respondent has failed to establish that it has been commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <gridpointenergy.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant to divert internet users seeking Complainant’s services to the disputed domain name’s resolving website, where Respondent offers services that either compete with or relate to goods and services offered by the Complainant. Attempting to pass off as a Complainant and divert internet users to a disputed domain name’s resolving website, where Respondent offers competing or relating products or services for sale is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content.”); see also Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides screenshots of the disputed domain name’s resolving website, which it argues feature a similar color scheme and logo that closely resembles Complainant’s own logo, and offers services similar to and competing with or relating to Complainant’s own services. The Panel find that the Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
In conclusion the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the <gridpointenergy.com> domain name in bad faith by disrupting Complainant’s business for commercial gain. Passing off as a Complainant in order to divert internet users seeking Complainant’s services to the disputed domain name’s resolving website, where Respondent offers related or competing services with Complainant’s mark is generally considered bad faith disruption for commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant). The Complainant’s screenshots of the disputed domain name’s resolving website, clearly features for sale services similar to Complainant’s business, and Complainant’s GRIDPOINT mark, incorporated into a similar logo. Therefore, the Panel finds that the Respondent seek to disrupt Complainant’s business for commercial gain under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent registered the disputed domain name in bad faith since it had actual knowledge of Complainant’s rights in the GRIDPOINT mark at the time of registration. Under Policy ¶ 4(a)(iii), actual knowledge of rights in a mark when registering a disputed domain name is generally sufficient to demonstrate bad faith, and may be demonstrated by Respondent registering confusingly similar domain name, Complainant’s longstanding use of the registered mark, and using the disputed domain name to offer competing services. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant argues that Respondent clearly had actual knowledge through its use of Complainant’s long used and registered GRIDPOINT trademark, its use of the disputed domain name to offer competing services, and the fact that Respondent contacted Complainant immediately after registering the disputed domain name. Furthermore, the Respondent does not dispute that the Respondent was fully aware of the GRIDPOINT trademarks when registering the disputed domain name. The Panel finds that the Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) since it had actual knowledge of Complainant’s rights in the mark at the time of registration.
Complainant argues that Respondent registered and uses the <gridpointenergy.com> domain name with opportunistic bad faith. Under Policy ¶ 4(a)(iii), opportunistic bad faith may be demonstrated by a Respondent registering a disputed domain name that integrates a distinct or famous mark, around the time of a certain event that creates interest or value in the disputed domain name. See Pettigo Comercio Internacional Lda v. Siju Puthanveettil, FA1501001600741 (Forum Feb. 18, 2015) (concluding that because the respondent registered the <lycaradio.com> domain name within hours of a UK media report announcing the acquisition of Sunrise Radio by Lyca, the complainant, the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii)). Complainant argues here that Respondent’s opportunistic bad faith is demonstrated by the timing of Respondent’s actions. Respondent allegedly registered the disputed domain name and immediately contacted Complainant and proposing a reseller relationship with Complainant. When this proposed deal fell through, Respondent continued to use the disputed domain name to offer competing services with Complainant’s mark in its domain name and displayed on the website. Complainant argues these facts demonstrate that Respondent registered the disputed domain name to leverage it into a business opportunity. The Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
In conclusion the Panel finds that the Respondent registered and uses the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gridpointenergy.com> domain name be TRANSFERRED from Respondent to Complainant.
Lars Karnøe, Panelist
Dated: October 5, 2020
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