Enphase Energy, Inc. v. Zhichao Yang
Claim Number: FA2206002000297
Complainant is Enphase Energy, Inc. (“Complainant”), represented by Charles P. Guarino of Moser Taboada, New Jersey, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enphaseenrgy.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd..
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 Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 14, 2022; the Forum received payment on June 14, 2022.
On June 15, 2022, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <enphaseenrgy.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 June 16, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of July 6, 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@enphaseenrgy.com. Also on June 16, 2022, the Chinese and English 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 July 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 PROCEEDING
The Panel notes that the Registration Agreement in this proceeding is written in Chinese, thereby making the language of the proceedings in Chinese. Complainant has submitted that because Respondent is conversant and proficient in English, the proceeding should be conducted in English.The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent’s disputed domain name uses English characters and words therein, suggesting that Respondent is probably proficient in the English language.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the probability that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel finds that the proceeding should be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant engages in the business of producing energy, primarily solar energy. Complainant asserts rights in the ENPHASE ENERGY mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 3,595,609, registered on March 24, 2009). See Amend. Compl. Ex. A. Respondent’s <enphaseenrgy.com> domain name is identical and confusingly similar to Complainant’s ENPHASE ENERGY mark, as it incorporates the mark in its entirety, only removing the letter “e” from the word “energy” and adding the “.com” generic top-level domain (gTLD).
Complainant has no rights or legitimate interests in the <enphaseenrgy.com> domain name. Complainant has not authorized or licensed Respondent to use the ENPHASE ENERGY mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the disputed domain name resolves to an inactive website.
Respondent registered and uses the <enphaseenrgy.com> domain name in bad faith. Respondent’s disputed domain name redirects uses to an inactive website, which evidences bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of producing energy, primarily solar energy.
2. Complainant has established its rights in the ENPHASE ENERGY mark through its registration of the mark with the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 3,595,609, registered on March 24, 2009).
3. Respondent registered the <enphaseenrgy.com> domain name on September 12, 2020.
4. Respondent has caused the disputed domain name to resolve to an inactive website.
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 submiuts that it has rights in the ENPHASE ENERGY mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,595,609, registered on March 24, 2009). See Amend. Compl. Ex. A. Registering a mark with the USPTO is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”). Since Complainant provides evidence of its registration of the mark, the Panel finds Complainant has sufficiently established its rights in the ENPHASE ENERGY mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ENPHASE ENERGY mark. Complainant argues Respondent’s <enphaseenrgy.com> domain name is identical or confusingly similar to Complainant’s ENPHASE ENERGY mark, as it incorporates the mark in its entirety, only misspelling the mark, removing a space between the words “enphase” and “enrgy” and adding the “.com” gTLD. Misspelling the mark and adding a gTLD is not enough to differentiate a disputed domain name from a mark. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”). Since Respondent only misspells the “energy” word of the mark, removes a space between the words “enphase” and “enrgy” and adds a gTLD, the Panel therefore finds the <enphaseenrgy.com> domain name is confusingly similar to Complainant’s ENPHASE ENERGY mark.
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 ENPHASE ENERGY mark and to use it in its domain name, but misspelling the “energy” word of the mark and removing a space between the words “enphase” and “enrgy”;
(b) Respondent registered the domain name on September 12, 2020;
(c) Respondent has caused the disputed domain name to resolve to an inactive website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights and legitimate interests in the <enphaseenrgy.com> domain name because Respondent is not authorized to use the ENPHASE ENERGY mark, nor is Respondent commonly known by the disputed domain name. Past panels have looked at the available WHOIS information to determine whether a Respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information shows Respondent is known as “Zhichao Yang” and there is no evidence to suggest Complainant authorized Respondent to use the ENPHASE ENERGY mark. See Amend. Compl. Annex E. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits Respondent does not use the <enphaseenrgy.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website is inactive. Using a disputed domain name only to redirect users to an inactive website is not a bona fide offering of goods and services or legitimate noncommercial or fair use per 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. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). In this case, Complainant provides screenshots of the resolving website, showing the website is inactive. See Compl. Ex. B. Therefore, the Panel finds Respondent is not using the disputed domain name in compliance with Policy ¶ 4(c)(i) and (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 does not have a right or legitimate interest 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, Complainant submits Respondent registered and uses the disputed domain name in bad faith because the resolving website is inactive. When a respondent uses a disputed domain name to redirect users to an inactive website, panels have found bad faith under Policy ¶ 4(b)(iv) because respondent diverts users from complainant’s business. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). Here, the Panel again references screenshots of the disputed domain name and notes that the resolving website is inactive. See Compl. Ex. B. As the Panel agrees, it finds Respondent acted in bad faith per Policy ¶ 4(b)(iv).
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 <enphaseenrgy.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: July 12, 2022
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