FirstEnergy Corp. v. Shi Lei
Claim Number: FA2201001982234
Complainant is FirstEnergy Corp. (“Complainant”), represented by Heather Barnes of Tucker Ellis LLP, Ohio, USA. Respondent is Shi Lei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <firstenerggy.com>, <firstenergt.com>, <firstenergyy.com>, <ffirstenergy.com>, <firsttenergy.com> and <furstenergy.com>, registered with DNSPod, Inc..
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2022. The Forum received payment on January 27, 2022.
On February 10, 2022, DNSPod, Inc. confirmed by e-mail to the Forum that the <firstenerggy.com>, <firstenergt.com>, <firstenergyy.com>, <ffirstenergy.com>, <firsttenergy.com> and <furstenergy.com> domain names are registered with DNSPod, Inc. and that Respondent is the current registrant of the names. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, Inc. registration agreement, which is in Chinese, 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 February 16, 2022, the Forum served the Complaint and all Annexes, including an English and Chinese language Written Notice of the Complaint, setting a deadline of March 8, 2022 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@firstenerggy.com, postmaster@firstenergt.com, postmaster@firstenergyy.com, postmaster@ffirstenergy.com, postmaster@firsttenergy.com, postmaster@furstenergy.com. Also on February 16, 2022, the English and Chinese language 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 March 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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. 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
As noted, the DNSPod, Inc. registration agreement is in Chinese. Pursuant to Rule 11(a), the language of the proceeding shall be Chinese, unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
The domain names resolve to websites with contents with commercial links in
English and which relate the domain names to types of energy sources. This demonstrates Respondent’s ability to understand and use the English language. Complainant says it is not conversant nor proficient in the Chinese language and would require delay and unnecessary costs to translate the document.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest that Respondent is conversant and proficient in the English language. Further, the language requirement has been satisfied through the English and Chinese language Written Notice of the Complaint. After considering the circumstances of the present case, the Panel determines that, absent a Response, the proceeding shall be in English.
A. Complainant is an electric utility company engaged in generating, transmitting and distributing electricity to the general public throughout the United States. Complainant also provides services involving the use of solar and other renewable sources of energy. It operates the websites “www.firstenergycorp.com” and “www.firstenergyhome.com”.
Complainant has rights in the FIRSTENERGY mark through registrations with the United States Patent and Trademark Office (“USPTO”) and the Canadian Intellectual Property Office (“CIPO”). Respondent’s <firstenerggy.com>, <firstenergt.com>, <firstenergyy.com>, <ffirstenergy.com>, <firsttenergy.com> and <furstenergy.com> domain names are identical or confusingly similar to Complainant’s FIRSTENERGY mark.
Respondent lacks rights and legitimate interests in the domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized or licensed Respondent to use its FIRSTENERGY mark in the domain names. Respondent does not use the domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use, but instead hosts parked, competing pay-per-click links on the domain names’ resolving websites.
Respondent registered and uses the domain names in bad faith with actual knowledge of Complainant’s rights in the FIRSTENERGY mark. Respondent has exhibited a pattern of bad faith registration and use. Respondent hosts parked, competing pay-per-click links on the domain names’ resolving websites.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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”).
Complainant has shown that it has rights in the FIRSTENERGY mark through registrations with the USPTO and CIPO (e.g. USPTO Reg. 2,234,228, registered March 23, 1999 and CIPO Reg. TMA597,122, registered Dec. 10, 2003). The Panel finds Respondent’s <firstenerggy.com>, <firstenergt.com>, <firstenergyy.com>, <ffirstenergy.com>, <firsttenergy.com> and <furstenergy.com> domain names to be confusingly similar to Complainant’s FIRSTENERGY mark as they all incorporate slightly misspelled versions of the mark and add the inconsequential “.com” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <firstenerggy.com>, <firstenergt.com>, <firstenergyy.com>, <ffirstenergy.com>, <firsttenergy.com> and <furstenergy.com> domain names were all registered on March 24, 2021, many years after Complainant registered its FIRSTENERGY mark, which has become famous in the United States. The domain names resolve to commercial webpages displaying links for solar panels, battery power packs, and other similar goods and services, all of which are directly related to Complainant’s field of electricity generation.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <firstenerggy.com>, <firstenergt.com>, <firstenergyy.com>, <ffirstenergy.com>, <firsttenergy.com> and <furstenergy.com> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum April 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s well-known FIRSTENERGY mark when Respondent registered the domain names and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s websites and of the goods and services promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
As further evidence of Respondent’s bad faith, the Panel accepts Complainant’s contention that Respondent is a known cybersquatter, who has been named as a respondent in at least 30 UDRP proceedings. Complainant’s search of the Respondent’s name “Shi Lei” in the Forum database of Domain Name Proceedings and Decisions resulted in numerous decisions against Respondent where the panels transferred the domain name at issue to the trademark owner: The Toronto-Dominion Bank v. Shi Lei / shi lei, FA1712001761568 (Forum January 29, 2018); Masonite International Corporation and Masonite Corporation v. shi lei, FA1803001779408 (Forum May 5, 2018); Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA1805001784643 (Forum June 18, 2018); Brighthouse Services, LLC v. Shi Lei, FA1807001799173 (Forum September 13, 2018); Citizens Financial Group, Inc. v. Shi Lei Linping, FA1811001815027 (Forum December 20, 2018); State Farm Mutual Automobile Insurance Company v. shi lei, FA2104001943375 (Forum June 1, 2021); General Motors LLC v. Shi Lei, FA2106001951694 (Forum July 23, 2021); AbbVie Inc. v. shi lei, FA2107001954302 (Forum August 11, 2021) and Leidos, Inc. v. Shi Lei, FA2112001976474 (Forum January 11, 2022).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <firstenerggy.com>, <firstenergt.com>, <firstenergyy.com>, <ffirstenergy.com>, <firsttenergy.com>, and <furstenergy.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 15, 2022
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