CE Power Solutions, LLC v. NA / Andrei Kulich
Claim Number: FA1211001471767
Complainant is CE Power Solutions, LLC (“Complainant”), represented by Carrie A. Shufflebarger of Thompson Hine LLP, Ohio. Respondent is NA / Andrei Kulich (“Respondent”), Belarus.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cepowersol.com>, registered with ENOM, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2012; the National Arbitration Forum received payment on November 16, 2012.
On November 19, 2012, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <cepowersol.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 November 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 2012 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@cepowersol.com. Also on November 20, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 provides safe solutions for the electrical power industry, specifically the 480V through 765kV electrical systems, and serves electric utility power plants, alternative energy facilities, transmission and distribution substations, and industrial facilities. Complainant’s CE POWER SOLUTIONS mark is widely recognized to identify Complainant’s high quality goods and services. Complainant offers these services under the CE POWER SOLUTIONS mark, which it has used since 2001 in its domain name at <cepowersol.com>, registered with Domain Bank. In March 2012, Domain Bank was acquired by a new registrar, Dotster.com. Dotster did not send renewal reminders to its registrant, and Complainant missed the September 5, 2012 deadline to renew the <cepowersol.com> domain name, or the domain name was fraudulently hijacked by a third party.
Respondent registered or acquired the <cepowersol.com> domain name sometime between September 5, 2012 and October 19, 2012, and the domain name resolves to online hosting facilities. The <cepowersol.com> domain name is identical to the domain name Complainant used as its primary URL for more than a decade, and is confusingly similar to Complainant’s CE POWER SOLUTIONS mark. Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and does not have authorization from Complainant to use the CE POWER SOLUTIONS mark in a domain name. Respondent does not use the <cepowersol.com> domain name in connection with a bona fide offering of goods or services, and rather “pirates” content from Complainant’s website in an attempt to affiliate itself with Complainant to conduct a “phishing” scheme. Respondent has been ordered to transfer more than three dozen domain names to the rightful trademark holder. Respondent uses the <cepowersol.com> domain name to attempt to gain information from Internet visitors, disrupts Complainant’s business, and benefits commercially from its use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, CE Power Solutions, LLC, provides safe solutions for the electrical power industry and serves electric utility power plants, alternative energy facilities, transmission and distribution substations, and industrial facilities. Complainant offers these services under the CE POWER SOLUTIONS mark, which it has used since 2001 in its domain name <cepowersol.com>. The domain name registrar did not send renewal reminders, and Complainant missed the September 5, 2012 deadline to renew the <cepowersol.com> domain name.
Respondent registered or acquired the <cepowersol.com> domain name sometime between September 5, 2012 and October 19, 2012, and the domain name resolves to online hosting facilities.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
A Complainant is not required to register its mark with a national authority in order to claim rights in the mark, and the Panel finds that Complainant’s failure to register its mark does not preclude Complainant from asserting rights in the CE POWER SOLUTIONS mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
Complainant asserts that it has common law rights in the CE POWER SOLUTIONS mark. Complainant’s CE POWER SOLUTIONS mark is widely recognized as identifier of Complainant and its goods, services and good will. The Panel finds that Complainant’s use of the CE POWER SOLUTIONS mark since 2001, and its use of the <cepowersol.com> domain name since that time are sufficient to demonstrate a secondary meaning in the mark with relation to Complainant’s services. See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark).
Complainant alleges that the <cepowersol.com> domain name is confusingly similar to its CE POWER SOLUTIONS mark, and points out that the disputed domain name uses an abbreviated version of Complainant’s mark. The <cepowersol.com> domain name uses the Complainant’s entire mark, while shortening the word “solutions” in the mark to “sol,” removing the spaces in the mark, and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that the <cepowersol.com> domain name is confusingly similar to Complainant’s CE POWER SOLUTIONS mark under Policy ¶ 4(a)(i). See Coca-Cola Co. v. Busch, 44 F.Supp. 405, 410 (E.D.Pa. 1942) (“[T]he abbreviation of the trade-mark which the public has used and adopted as designating the product of the [trademark owner] is equally as much to be protected as the trademark itself . . .”); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that Respondent is not commonly known by the <cepowersol.com> domain name, nor is it authorized to use Complainant’s trademark to register a domain name. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel concluded that the respondent failed to establish rights and legitimate interests in the disputed domain name, because the respondent was not permitted to register domain names using the complainant’s mark, and did not dispute this allegation. The current WHOIS information identifies “NA / Andrei Kulich” as the registrant. The Panel finds that the registrant name does not demonstrate that Respondent is commonly known by the <cepowersol.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s previous use of the <cepowersol.com> domain name fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use, because Respondent attempted to create the impression of being affiliated with Complainant by using “pirated” content from Complainant’s website in order to carry on a “phishing” scam. Complainant also argues that Respondent’s current use of the <cepowersol.com> domain name to host a website with information regarding “Payday Loans Canada” to conduct a “phishing” scam, without an attempt to affiliate itself with Complainant’s business, is not a use in relation to a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel concludes that Respondent’s use of the domain name to host a website that attempts gain Internet users’ personal information, whether or not the website appears related to Complainant’s business, does not show a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant contends that Respondent has been party to numerous UDRP proceedings, over three dozen of which resulted in a transfer of the disputed domain name to the mark’s rightful holder. The Panel notes that Complainant’s Annex 10 is listed as the supporting evidence for Complainant’s contention; however, the listed UDRP cases each have “WhoisGuard Protected” listed as the respondent. The Panel concludes that because the Respondent named in the present case is “NA / Andrei Kulich,” there is insufficient evidence to determine that Respondent has demonstrated a pattern of bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent intends to disrupt its business by acting as a competitor in Respondent’s use of the <cepowersol.com> domain name, which demonstrates bad faith. Complainant argues that Respondent is a competitor in the sense that it is acting in opposition to Complainant because Respondent benefits from its use of the CE POWER SOLUTIONS mark to drive Complainant’s potential customers to the resolving website. Respondent’s website serves to disrupt Complainant’s business by drawing traffic away from Complainant, therefore Respondent’s registration and use of the <cepowersol.com> domain name is in bad faith under Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (holding that the “primary effect” of the respondent’s registration and use of the domain name was to have a disruptive effect on the complainant’s activities, which amounts to a finding of the respondent’s bad faith registration and use of the disputed domain name).
Complainant claims that Respondent registered the <cepowersol.com> domain name to generate the likelihood of confusion between Complainant’s mark and Respondent’s website in order to attract web traffic. Complainant argues that Respondent attempted to gain traffic flow to its website in order to “phish” information from users, which amounts to bad faith registration and use. The panel in Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000), stated that the respondent’s use of the complainant’s mark to attract users to the resolving website was a violation of Policy ¶ 4(b)(iv). In Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004), the panel concluded that the respondent’s bad faith registration and use was apparent by its use of the disputed domain name to redirect Internet users to a website that improperly affiliated itself with the complainant in order to fraudulently acquire personal information from the complainant’s customers. Here, the Panel concludes that Respondent’s use of the CE POWER SOLUTIONS mark to carry on a phishing scheme constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
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 <cepowersol.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 4, 2013
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