Enphase Energy, Inc. v. Lal Babu Singh
Claim Number: FA2101001928204
Complainant is Enphase Energy, Inc. (“Complainant”), represented by Charles P. Guarino of Moser Taboada, New Jersey, USA. Respondent is Lal Babu Singh (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enphaseenergy.online>, registered with 1&1 IONOS SE.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 13, 2021; the Forum received payment on January 13, 2021.
On January 14, 2021, 1&1 IONOS SE confirmed by e-mail to the Forum that the <enphaseenergy.online> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 January 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2021 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@enphaseenergy.online. Also on January 15, 2021, 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.
PRELIMINARY ISSUE: DEFICIENT RESPONSE
A Response was received after the deadline to file a response had passed. Respondent submitted a response after the deadline to file a response had passed. Although deficient, the Panel, accepts and considers this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
On February 11, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., 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, Enphase Energy, Inc., operates an energy technology company focused on solar power, energy storage, and monitoring systems for residential and commercial customers throughout the world. Complainant has rights in the ENPHASE ENERGY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 3,595,609, registered Mar. 24, 2009). See Amend. Compl. Ex. A. Respondent’s <enphaseenergy.online> domain name is identical to Complainant’s ENPHASE ENERGY mark, only adding the “.online” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <enphaseenergy.online> domain name as it is not commonly known by the disputed domain name and is not an authorized user or licensee of the ENPHASE ENERGY mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent fails to make active use of the disputed domain name as it resolves to an inactive webpage.
Respondent registered and uses the <enphaseenergy.online> domain name in bad faith. Respondent disrupts Complainant’s business by directing Internet users to an inactive website. Additionally, Respondent attempts to profit from the confusion of Internet users seeking Complainant’s goods.
B. Respondent
The Respondent contends it bought the domain name in good faith and had no intention to gain from the goodwill of the Complainant’s trade mark. The good faith of the Respondent can be established because after knowing that the Respondent’s domain name is identical to Complainant’s registered trade mark and domain name of the company, Respondent agreed to give up all rights associated with the domain name and is willing to transfer the domain name to the Complainant. The Respondent bought the domain name believing that it is not identical as there is no space between “Enphase and Energy” and there is suffix added “online” which is written altogether as “ENPHASEENERGY.ONLINE” but soon after receiving the correspondence from the Complainant, the Respondent realized that the domain name is identical and is ready to transfer the same to Complainant.
C. Additional Submissions
None.
Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain name at issue shall be transferred from Respondent to the Complainant.
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 asserts rights in the ENPHASE ENERGY mark through its registration with the USPTO. Registration of a mark with the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 3,595,609, registered Mar. 24, 2009). See Amend. Compl. Ex. A. The Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <enphaseenergy.online> domain name is identical to Complainant’s ENPHASE ENERGY mark, only adding the “.online” gTLD. Addition of a gTLD does not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Therefore, the Panel finds the disputed domain name is identical or confusingly similar to Complainant’s ENPHASE ENERGY mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden 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 and legitimate interests in the <enphaseenergy.online> domain name as it is not commonly known by the disputed domain name and is not an authorized user or licensee of the ENPHASE ENERGY mark. Relevant WHOIS information demonstrates that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Here, the WHOIS information of record identifies the registrant as “Lal Babu Singh.” See Amend. Compl. Ex. C. Thus, the panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <enphaseenergy.online> domain name for any bona fide offering of goods or services or for a legitimate noncommercial or fair use, but instead directs Internet users to an inactive website. Inactive holding of an infringing domain name does not constitute a bona fide offer of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. Complainant provides evidence of Respondent’s inactive holding of the disputed domain name in the form of a screenshot. See Amend. Compl. Ex. B. Respondent makes no contentions with regards to Policy ¶ 4(a)(ii). Respondent does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”).
Complainant claims that Respondent registered and uses the <enphaseenergy.online> domain name in bad faith because Respondent disrupts Complainant’s business by directing Internet users to an inactive website. Inactive holding of a disputed domain name displays bad faith under Policy ¶ 4(b)(iii). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the public perception that Complainant is closed, no longer exists, or is not a legitimate business. Complainant provides evidence of Respondent’s failure to make active use of the disputed domain. See Amend. Compl. Ex. B. Therefore, Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enphaseenergy.online> domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: February 22, 2021
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