Enfinity Global, Inc. v. Guy Enfinity
Claim Number: FA2110001968860
Complainant is Enfinity Global, Inc. (“Complainant”), represented by Phillip Barengolts of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Guy Enfinity (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enfinityglobal.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 13, 2021; the Forum received payment on October 13, 2021.
On October 14, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <enfinityglobal.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@enfinityglobal.com. Also on October 20, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant
is a global renewable energy company focused on operating solar and other
renewable energy assets around the world. Complainant has rights in the
ENFINITY mark with numerous trademark agencies around the world. Complaint also
submits that it has established common
law rights in the ENFINITY trademark and that its
predecessor in title held those rights since at least 2008. Respondent’s
<enfinityglobal.com> domain name is confusingly similar to
Complainant’s ENFINITY mark. Respondent incorporates the mark in its entirety
and adds the generic term “global” along with the “.com” generic top-level
domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <enfinityglobal.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the ENFINITY mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to Complainant’s webpage.
Respondent registered and used the <enfinityglobal.com> domain name in bad faith as Respondent redirects internet users to Complainant’s official webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that conducts a global renewable energy company focused on operating solar and other renewable energy assets around the world.
2. Complainant has established its registered trademark rights in the ENFINITY mark with numerous trademark agencies around the world.
3. Complainant has also established its common law rights in the ENFINITY trademark and that its predecessor in title held those rights since at least 2008.
4. Respondent registered the disputed domain name on August 27, 2018.
5. Respondent has caused the disputed domain name to resolve to Complainant’s webpage.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ENFINITY mark with numerous trademark agencies around the world. Registration of a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Here, Complainant has provided the Panel with copies of its registration of the ENFINITY mark with trademark agencies around the world, including the United Kingdom and Canada. See Compl. Ex. D. The Panel accepts that evidence. Therefore, the Panel finds that Complainant has rights in the mark per Policy ¶ 4(a)(i).
Complaint also submits that it has established common law rights in the ENFINITY trademark and that its predecessor in title held those rights since at least 2008. Complainant argues that its predecessor in title began using the ENFINITY mark in 2008 in connection with consulting, installation and maintenance, and development services in the field of renewable energy, including in several countries throughout the world. Having regard to all the circumstances, the Panel finds that Complainant has established its common law trademark rights in the ENFINITY mark and that those rights were acquired in 2008.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ENFINITY mark. Complainant argues that Respondent’s <enfinityglobal.com> domain name is confusingly similar to Complainant’s ENFINITY mark. Registration of a domain name that contains a mark in its entirety and adds a generic word and gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Here, Complainant argues that Respondent incorporates the mark in its entirety and adds the generic term “global” along with the “.com” gTLD. The Panel agrees and finds that Respondent’s domain name is confusingly similar to Complainant’s ENFINITY mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
(a) Respondent has chosen to take Complainant’s ENFINITY trademark and to use it in its domain name, adding the generic word “global” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on August 27, 2018;
(c) Respondent has caused the disputed domain name to resolve to Complainant’s webpage;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interest in the <enfinityglobal.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the ENFINITY mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Guy Enfinity” , but there is no evidence to suggest that Respondent was authorized to use the ENFINITY mark or was commonly known by the disputed domain name. Indeed, the contrary is strongly indicated by the facts set out by Complainant. In particular, the domain name was re-registered on August 29, 2021 in connection with Gino Van Neer who is a former executive and employee of the prior owner of the ENFINITY Marks, though he was not employed by the prior owner or by Complainant at the time of this renewal. An email chain between the Registrar and the registered email address that is in evidence shows that the domain was registered with the involvement of a company named Peritus Global in India, presumably to a “Gey Baeyens.” Guy Baeyens is also a former executive and employee of the prior owner of the ENFINTIY Marks, although he was not employed by the prior owner or by Complainant at the time of this renewal, and was not authorized to renew the registration. Therefore the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to Complainant’s webpage. Use of a disputed domain name to resolve to a complainant’s actual webpage is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). Here, Complainant argues that Respondent’s <enfinityglobal.com> domain name resolves to its actual webpage and makes use of the ENFINITY mark to confuse internet users. Taking the evidence as a whole, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First,
the Panel is satisfied on the evidence
adduced by Complainant that the Respondent has registered the domain name using
a false name that mimics the Complainant and to deny
Complainant access to the domain name. Clearly, this has the potential to cause
damage being done to Complainant and also to outside parties who may assume
that the domain name is an official domain name of Complainant leading to its
official website. Such conduct is in itself bad faith.
Secondly, Complainant argues that Respondent registered and used the <enfinityglobal.com> domain name in bad faith as Respondent redirects internet users to Complainant’s official webpage. Use of a disputed domain name to resolve to a complainant’s actual webpage may be evidence of bad faith per Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant argues that Respondent’s <enfinityglobal.com> domain name resolves to its actual webpage and makes use of the ENFINITY mark to confuse internet users. Taking the evidence as a whole the Panel finds that Respondent’s actions constitute bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enfinityglobal.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 16, 2021
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