Ambit Holdings, L.L.C. v. Josh Koppang
Claim Number: FA1302001485245
Complainant is Ambit Holdings, L.L.C. (“Complainant”), represented by George R. Schultz of Schultz & Associates, P.C., Texas, USA. Respondent is Josh Koppang (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ambit.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. O'Connor as Panelist.
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2013; the National Arbitration Forum received payment on February 14, 2013.
On February 14, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <ambit.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 the Policy.
On February 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 2013 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@ambit.com. Also on February 26, 2013, 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.
A timely Response was received and determined to be complete on March 18, 2013.
Complainant submitted an Additional Submission, which was received and determined to be compliant on March 25, 2013.
Respondent submitted an Additional Submission, which was received and determined to be compliant on April 2, 2013.
On April 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O'Connor 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 "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
At least as early as 2006, Complainant began using the AMBIT mark in commerce in connection with distribution of energy, namely, distribution of electricity and natural gas to residential and commercial users. Complainant has continuously used the AMBIT mark in commerce since its date of first use.
Complainant is the owner of the following trademark registrations for the AMBIT mark:
AMBIT ENERGY & Design, U.S. Trademark Registration No. 3,389,005, filed July 3, 2006, registered February 26, 2008
AMBIT ENERGY, U.S. Trademark Registration No. 3,443,624, filed February 156, 2007, registered June 10, 2008
AMBIT, U.S. Trademark Registration No. 3,783,848, filed April 14, 2009, registered May 11, 2010.
Complainant is an electricity and natural gas service provider that serves residential and commercial customers, primarily marketed through a direct sales channel of more than 150,000 Independent Consultants. Complainant has served more than 1 million residential customers and produced nearly $1 billion in sales.
Complainant has received widespread recognition for its services provided under the AMBIT mark.
The domain name at issue, <ambit.com> (the "Domain Name"), was acquired by Respondent on March 2, 2010.
The Domain Name is identical or confusingly similar to the AMBIT mark, differing only by its inclusion of the generic top-level domain ".com."
The Domain Name is further confusingly similar to Complainant's AMBIT mark because the goods and services of Complainant and Respondent overlap and are related and the marketing channels used by Complainant and Respondent are similar. Complainant uses the AMBIT mark in connection with distribution of energy, namely, distribution of electricity and natural gas to residential and commercial users. The Domain Name resolves to a web site offering electricity products and services and offering access to a referral service similar to Complainant's network of Independent Consultants.
Respondent's registration (i.e. its acquisition) of the Domain Name was nearly four years after Complainant's first use of the AMBIT mark. Complainant has superior rights in the AMBIT mark and Respondent has no rights or legitimate interest in the Domain Name.
Respondent's use of the Domain Name is not bona fide, because Respondent is competing with Complainant. Respondent's name, Josh Koppang, is not the Domain Name. And Respondent has not been licensed or authorized by Complainant to use the AMBIT mark or the Domain Name. Respondent's use of the Domain Name to sell competing goods and services is not a legitimate noncommercial or fair use of the Domain Name.
Respondent has offered to sell the Domain Name to Complainant for a sum exceeding out-of-pocket costs of registering the Domain Name. Complainant refers to e-mail correspondence between Complainant and Respondent in which Respondent states admits that "Ambit Energy is the first company that comes to mind when you hear the word ambit ... " In a telephone call in response to the e-mail correspondence, Respondent stated that he received offers from third parties for $25,000 to purchase the Domain Name, but Respondent believed that the Domain Name was worth no less than $100,000 cash. Such an admission and an offer of sale of the Domain Name are further evidence of Respondent's lack of rights and legitimate interest.
Respondent acquired the Domain Name in 2010, which is the relevant date from which bad faith is to be measured. Complainant has at least established common law rights in the AMBIT mark beginning long prior to 2010. Therefore, Respondent has registered the Domain Name in bad faith.
Respondent is using the Domain Name in bad faith because Respondent has made an offer for sale of the Domain Name for a sum exceeding out-of-pocket costs of registering the Domain Name and because it is using the identical or confusingly similar Domain Name to sell competing goods and services.
B. Respondent
There is no evidence that Complainant has rights ownership in the trademark Registration No. 3,786,848 for use in company of those trademarks, as they are owned not by Complainant, as alleged, but by Ambit Energy, LP (a Texas Limited Partnership). The Complainant has no standing and the request for domain transfer should be denied.
The Domain Name is the common generic dictionary word "ambit". It is well established that Complainant is not entitled to protection for every usage of the word "ambit". The word is used by many third parties as evidenced by a Google search for "ambit" which returns about 9,750,000 results of companies, organizations, and non-commercial using the term. These entities represent representing uses as diverse as mathematic studies, architecture, and biosciences. Interestingly, a Yahoo search for "ambit" shows ambit.com as being the Respondent's bona fide offer of financial investment software listed on the first page titled "be your Own Hedge Fund" with over 2.5 million results.
In addition, a search of the USPTO database reveals over 24 live trademarks for Ambit including hearing aids, biosciences and other industries that predate the Complainant alleged use of the term Ambit in 2006.
The Complainant has not proven that the term "ambit" is "unique and distinctive" to the Ambit Energy business. As a matter of fact it has been proven to be a common term and therefore the Complainant's request should be denied.
Respondent was the first of the parties to register the Domain Name. Complainant has never registered the Domain Name in dispute. Furthermore, because the Domain Name is a common term the Respondent has legitimate rights as the registrant of record.
Respondent executed demonstrable preparations to use the Domain Name in connection with a bona fide offering. Respondent executed a domain transfer agreement with Cadence Design Systems for the transfer of the Domain Name for use in good faith to provide investment algorithm software to the retail public on February 9, 2010. The transfer was completed on March 2, 2010. Respondent prepared for use of the Domain Name to sell financial investment software by incorporating the business in Delaware on February 15, 2010 with the name Ambit.com, Inc. Respondent applied for and received an EIN number for the Domain Name. Respondent applied for and received a merchant account explicitly for the bona fide offering of investment algorithm software. A bank account was opened in the name of Ambit.com. The web site was designed and launched to the retail public. Customers paid and received services from Respondent for the bona fide offering of investment software. See customer Ann Tribble's Declaration. Also see Ms. Tribble's receipt of purchase dated Dec 2, 2010. Clearly the Respondent establishes that prior to the notice of this dispute dated February 25, 2013 that preparations were made to use the Domain Name in connection with a bona fide offering of a good or service.
Respondent is commonly known by the Domain Name even though the Respondent has not acquired trademark or service rights. Again, one such example that a company is commonly known is a customer's purchase of the bona fide offering. In this case offering is investment software. In her Declaration, Ann Tribble acknowledges the purchase of the software and the charge to her credit card.
Respondent offers a legitimate service to consumers in a different industry than the Complainant. Respondent offers investment software.
Respondent temporarily in conjunction with a possible sale, posted mock or demo pages for a solar company to view. Complainant misrepresents that there was any competing good or service. There was never any competing good or services offered. After Respondent received notice of the dispute, the mock pages were immediately removed. There was never any attempt or intent to adversely affect the alleged Complainant's business. Complainant has offered no evidence to support this allegation that Complainant's business was adversely affected.
Respondent's Ambit logo is different than the alleged Complainant's logo.
Respondent acting in the course of prudent business operations had a discussion of the sale of the Domain Name to the Complainant. The dialogue was an ongoing negotiation. There are multiple domains for sale with the generic term ambit. For example, <ambit.net> is listed for auction at $23,000 USD. Respondent had received inquiries by interested parties regarding the possible sale of the Domain Name. In addition, there was obviously interest by the Complainant in acquiring the Domain Name as evidenced by the emails. Knowing this John Burke of Ambit Energy during one of these phone calls, requested Respondent "to wait until Tuesday before selling the domain." Clearly this was a business negotiation. As a matter of fact, this entire proceeding may fall outside of the scope of the UDRP process. The intention of registering and acquiring the Domain Name from Cadence Design Systems by Respondent was clearly to sell and provide a bona fide offer for investment algorithm software to retail customers and not to sell it to the Complainant. Furthermore, an offer to sell the Domain Name does not constitute bad faith.
It has not yet been determined that the Complainant listed in this dispute has any standing in these proceedings. If it determined that the Complainant is recognized, the Respondent was not aware of any registered trademark by the Complainant prior to the legitimate registration and bona fide offering of the Respondent. Merely stating that the Respondent had knowledge does not constitute proof.
Respondent did not register the Domain Name primarily for the purpose of disrupting the business of a competitor. The original offering was for investment algorithm software a noncompeting business to the Complainant.
At no time did Respondent intentionally attempt attract, for commercial gain, Internet users to Respondent's web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location. The only offer made by the Respondent to the public at large was for investment algorithm software.
C. Additional Submissions
1. Complainant
Complainant again refers to its established common law and statutory trademark rights in the AMBIT mark, and identifies additional registrations for that mark. Complainant repeats its contention of confusing similarity. Complainant also establishes assignment of the AMBIT mark to itself from Claimant's predecessor in interest.
Respondent cannot establish any rights or legitimate interests.
Respondent knew of Complainant prior to registration of the Domain Name. Complainant and Respondent are in proximity to each other in the Dallas/Fort Worth area of Texas. Complainant expended approximately $2,500,000 in traditional advertising of the AMBIT mark in that area from 2006 through 2009. And, Complainant expended approximately $1,000,000 in Internet advertising in that period.
Respondent has been infringing Complainant's rights in the AMBIT mark by offering competing solar energy services.
Respondent is guilty of unfair competition with Complainant by the offering of these services. A comparison of Respondent's web pages and the advertising of Complainant reveals copying by Respondent, e.g., by emulating Complainant's tag line, by advertising a referral program as the method of selling his services, and by the use of certain phrases also used by Complainant. Respondent has also emulated the appearance and structure of his web pages to match those of Complainant, and emulated the appearance of Complainant's logo.
There is evidence that Respondent's use of the Domain Name has caused actual confusion. An <Alexa.com> web site shows the top search queries for the Domain Name. The top search queries include "www.ambitgetaway.com" and "ambit login." Each of these terms is directly related to Complainant. Strikingly, almost ten percent (10%) of the traffic received by the Domain Name should be directed to web sites of Complainant.
Further, consumers landing on the web site for the competing solar company during the nearly two-year period it was posted had no way of knowing such a web site was a "mock" or "demo", thereby leading to consumer confusion as to Complainant's sponsorship or affiliation with the Domain. The web site resolving from the Domain Name states that Respondent's offered competing goods and services are "Competitively priced, cleaner energy for your business." Therefore, even assuming that the web page of Respondent was a "demo," a reasonable consumer would still have been likely to be confused as to the source of the solar energy products and services offered on the web site resolving from the Domain Name.
Respondent's argument that he is a legitimate business is not persuasive. Since registering the Domain Name, Respondent has offered competing solar energy goods and services for nearly two (2) years. Respondent's alleged "temporarily ... posted mock or demo pages" for a competing solar company have been displayed as the web site resolving from the Domain Name since at least as early as August 8, 2011 and have remained posted until the very day that Respondent was served with the Complaint in this proceeding. Only, "[a]fter the Respondent received notice of the dispute, the mock pages were immediately removed."
The evidence submitted by Respondent of his alleged use of the Domain
Name in 2010 for a bona fide offering of goods or services are only recently created, and are clearly self-serving, and misleading. Respondent's alleged screenshots of the purported web site for his investment software resolving from the Domain Name in 2010 are actually images captured as recently as February 2013. The copyright notice on the alleged screenshots states "© 2013 Ambit.com, Inc."
Respondent declares that "I continue to own and operate the Bona Fide Offering of investment software at ambit.com." However, Respondent's corporate charter for the investment software company, "Ambit.com, Inc.", in the State of Delaware was forfeited in early 2011. Respondent also has failed to submit an annual report for 2011 in Delaware, showing continued business activity, as required by law. Therefore, despite Respondent's self-serving testimony, the better the evidence suggests he has not been in a legitimate business for years.
Respondent has admitted that Complainant is the rightful owner of the Domain Name, by initiating an unsolicited offer to Complainant to sell the Domain Name in which he states that "Since Ambit Energy is the first company that comes to mind when you hear the word ambit..."
Respondent's arguments that Complainant's AMBIT mark is generic are incorrect and Respondent cannot establish rights in the Domain Name by registration.
Respondent's alleged single legitimate sale after acquiring the Domain Name is insufficient to establish that Respondent is commonly known by the Domain Name.
Respondent cannot establish that Respondent made a legitimate noncommercial or fair use of the Domain Name. Respondent's activities were not legitimate because they were, and are, illegal under United States law. Respondent was and is infringing Complainant's trademark rights under federal and state trademark and unfair competition law as previously discussed. Respondent has admitted that his use was for commercial purposes and that such commercial purposes diverted consumers to the Domain Name <ambit.com>. For example, Respondent admits that "Respondent offers investment software," and that "The Respondent prepared for use of the domain name ambit.com to sell financial investment software."
Respondent has made an unsolicited offer to sell the Domain Name to Complainant. Respondent has asserted that he has posted "mock" pages in conjunction with a possible sale. Assuming arguendo that Respondent's assertion is true, no evidence of such a possible sale to a third party has been presented. Further, it is clear that the "mock" pages were designed and posted in order to drive up the sale price of the Domain Name to the alleged third party and/or Complainant. Further, Respondent's willingness to post "mock" pages for nearly two (2) years in order to further a sale, in addition to offering to sell the Domain Name to Complainant, demonstrates that Respondent has no rights or legitimate interests.
Respondent registered the Domain Name in bad faith because Complainant had established trademark rights in the AMBIT mark prior to Respondent's registration of the Domain Name and Respondent knew or reasonably should have been aware of such rights. There is reliable evidence that Complainant advertised with such intensity in the geographic area where Respondent was filed, that he either knew or should have known of Complainant and its use of the AMBIT mark.
Respondent's subsequent use of the Domain Name was in bad faith.
Respondent has infringed the trademark rights of Complainant.
Respondent's unsolicited offer to sell the Domain Name to Complainant and third parties in excess of out-of-pocket costs constitutes bad faith registration and use. Respondent offered to sell the domain name to Complainant for "over $100,000." In an email sent to Complainant's counsel after the Complaint was filed, Respondent asserted that the Domain Name is worth $116,000. In that email, Respondent further makes a self-serving statement that he has received a third party offer to sell the Domain Name for $25,000. It is likely that the "mock" pages were constructed to be similar to Complainant's pages to inflate the value of the Domain Name or extort a premium from Complainant.
Respondent has registered and used the Domain Name to offer competing goods and services, which disrupts Complainant' s business. Respondent admits that an Internet search of the term "ambit" results in the web site resolving from the Domain Name listed on the first page among results for Complainant.
Respondent has used the Domain Name to offer competing goods and services. Such use constitutes bad faith registration and use.
In registering the Domain Name, Respondent agreed to Policy ¶ 2 that states:
By applying to register a domain name, or asking us to renew a domain name registration, you hereby represent and warrant to us that ... (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name infringes or violates someone else's rights.
Policy ¶ 2 imposes a duty on Respondent to conduct an investigation at the time of registration and includes a representation and warranty by Respondent that it will not now nor in the future use the domain name in violation of any laws or regulations. Respondent has violated U.S. trademark law by infringing Complainant's rights in the AMBIT mark.
Respondent was fully capable of searching for marks that the
Domain Name infringes upon at the time Respondent acquired the Domain Name and thereafter
Therefore, such lack of good faith effort to search, when Respondent has shown to be fully capable of completing, to avoid using Complainant's AMBIT mark is further evidence of bad faith registration and use.
2. Respondent
Respondent clearly establishes indisputable proof that demonstrable preparations were made in good faith and a legitimate business was intentionally manifested and services were offered for sale to the public with specific fees for financial algorithm software. All of these preparations took place prior to any complaint being filed with this body.
There is no reference or a dispute by Complainant objecting to the evidence for a 'bona fide offering" exemplified by the Declaration of Mrs. Tribble, Furthermore, the Complainant by their definition acts in bad faith during these proceedings by "mischaracterization of evidence is ... proof of bad faith". When examining the web site archive submitted by Complainant, they dishonestly only present the panel with belated pictures of the mock pages beginning on August 8, 2011. The Complainant intentionally fails to acknowledge and present prior screenshots, which confirm the bona fide offering of the Respondent’s financial software from the same web site, dated December 12, 2010. This page corresponds directly to support the evidence provided in the Response. The offering is for financial algorithm software billed at $99.00 per month and billed quarterly for a total of $297.00 to assist consumers in investment management. This is the exact amount billed to Mrs. Tribble and reflected on her credit card statement previously submitted. In addition, for variety and the panel's consideration, see an archived record of the Ambit.com User Agreement, with multiple references to financial software, dated December 12, 2010, which corroborates the Ambit.com User Agreement pulled from the personal file of Ann Tribble. It is laughable that the Complainant is attempting to prove there has not been a bona fide offer by the Respondent and accuses the Respondent of "creating" evidence. To follow this logic one would have to conclude a massive premeditated conspiracy several years long in the making and that Respondent created a corporation in Delaware, opened a merchant account listing investment financial services, registered a domain on March 2, 2010, spent thousands of hours programming a financial investment algorithm, created content for an investment software web site, constructed an offer, solicited customers worldwide via the internet, charged customers, provided services, and somehow received support in this charade from Chase bank to falsify a customer's credit card statement, etc. all in an effort to harm Complainant.
Respondent clearly establishes indisputable proof that preparations were made and a legitimate business offering was intentionally manifested and services were offered for sale to the public with specific fees for financial algorithm software.
Additionally, the Complainant provides references to trademark infringement law and cases. These are irrelevant to these proceedings and are outside of the scope of the UDRP.
Complainant has failed to prove that Respondent had any constructive or direct knowledge of any service marks held by the Complainant prior to registering the Domain Name and acted in bad faith during registration.
Even if one were to conclude that Respondent should have searched for AMBIT on the USPTO web site, he would have discovered several "AMBIT" trademarks, none of which offer financial algorithm software. A reasonable person would conclude there was no danger at the time of domain registration of being in conflict with a trademark. Furthermore, the date of registration for the Complainant's alleged trademark was on May 11, 2010, months after the Respondent had registered the Domain Name on March 2, 2010. The Complainant did not obtain rights to the referenced trademark until May 11, 2011, over a year after the Domain Name was registered.
There is no proof that the Complainant is "famous" and has saturated the marketplace in advertising or has established any secondary meaning of any trademark rights.
Merely spending money toward advertising in a geographic area does not guarantee results. One could easily infer that the money was wasted and ineffectual.
Many questions beg to be asked of the Complainant and their sudden concern for the Domain Name only after being contacted by Respondent. Such as, if the Respondent's ambit.com site was so damaging to the Complainant's business, why wait for two years to file a complaint? Doesn't this demonstrate that in point of fact, there was no concern about ambit.com at all and that the Respondent had already established rights at the domain?
The Complainant misrepresents that there was any competing good or service. There was never any competing good or services offered, no prices offered, sign up fees, membership fees presented, etc. In the ordinary course of business Respondent was solicited by Todd Allen in July 2011 to acquire the Domain Name. As part of the negotiation, at the direction of Mr. Allen, Respondent created mock marketing pages. After failing to agree to terms both parties mutually agreed not to move forward with the sale. After the Respondent received notice of the dispute, the mock pages were immediately removed. There was never any attempt or intent to adversely affect the alleged Complainant's business. The Complainant has offered no evidence to support this allegation that the Complainant's business was adversely affected.
Proper resolution of this dispute requires the Panel to make findings as to the registration and use of the AMBIT mark and as to the registration and use of the Domain Name.
Regarding the AMBIT mark, the Panel finds:
1. Complainant's predecessor-in-interest, Ambit Energy, LP ("Predecessor") adopted and first used the AMBIT ENERGY mark in 2006, in conjunction with the distribution of energy, namely, distribution of electricity and natural gas to residential and commercial customers.
2. Predecessor extensively marketed and advertised its services of energy distribution in the Dallas/Fort Worth area and on the Internet.
3. Predecessor's method of marketing involves referral services in which its customers refer other potential customers to Predecessor for electrical services.
4. Predecessor has been successful in its marketing and advertising, in substantially expanding its services of energy distribution.
5. Predecessor has obtained federal, nationwide rights in the AMBIT ENERGY mark by reason of its U.S. Trademark Registrations Nos. 3,389,995 and 3,443,624 having effective dates of July 3, 2007 and February 15, 2007.
6. Predecessor adopted and first used the AMBIT mark concurrently with the AMBIT ENERGY mark, and has used that mark in a manner similar to the AMBIT ENERGY mark.
7. Predecessor has obtained federal, nationwide rights in the AMBIT mark by reason of its U.S. Trademark Registration No. 3,783,848 having an effective date of April 14, 2009.
8. Complainant acquired all right, title and interest of Predecessor in the AMBIT ENERGY and AMBIT marks and their associated goodwill on May 5, 2011.
9.
Complainant
has continued and expanded Predecessor's use and registration of the AMBIT
ENERGY and AMBIT marks to the present.
Regarding the Domain Name <ambit.com>, the Panel finds:
1. Respondent incorporated in Delaware on February 9, 2010 under the name Ambit.com, Inc.
2. Respondent registered the Domain Name on March 2, 2010.
3. Respondent submitted an application for a merchant account (for credit purposes) on or about October 26, 2010, stating that the product was to be an "investment algorithm software license."
4. Respondent had in operation, at least as early as December 12, 2010, a web page using the Domain Name and a User Agreement relating to the web page. The web page requests the user to sign up for a fee-based access to "the world's #1 Investment Algorithm." The User Agreement refers to a " a unique cloud-based user interface, proprietary computer algorithm and push notification premium subscription service at www.ambit.com."
5. The User Agreement was executed by an Ann Tribble on or about December 3, 2010, who concurrently transferred $297 to Respondent for investment.
6. A financial record for "Ambit" shows the $297 investment in 2010 and a $39.95 investment on March 13, 2011. Both investments are identified as "completed."
7. The corporate charter of Ambit.com, Inc. has been forfeited, and the company failed to file an annual report in 2011.
8. There is no evidence supporting Respondent's claim that he continued to provide his algorithm service subsequent to March 13, 2011.
9. Beginning at least as early as August 8, 2011, and continuously through February 18, 2013, Respondent displayed a web page employing the Domain Name. These web pages identified "Ambit Solar" as a "Fastest Growing Industry" and promoted services in which customers refer other potential customers. Two photos on the web page are overlaid with the phrases "You shouldn't have to pay more to support 100% pollution-free electricity" and "Competitively priced, cleaner energy for your business."
10. Through this web page, Respondent was marketing energy distribution services through the use of a referral service.
11. Respondent is located in the Dallas/Fort Worth area of Texas.
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.
For the purposes of this decision, the Panel will consider the AMBIT ENERGY and AMBIT marks as one and refer to them as the AMBIT mark[1].
The Domain Name is identical to the AMBIT mark, differing only by the addition of the generic top level domain ".com". See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Complainant's and Respondent's contentions, as to the similarity and dissimilarity of the services provided by Respondent to the services of Complainant, are irrelevant to a consideration of the first element of the Policy.
Respondent's contentions as to the use by third parties or the generic nature of the word "ambit" are also irrelevant, given Complainant's rights in the AMBIT mark.
Complainant has met its burden of proof under paragraph 4 (a)(i) of the Policy.
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant has established its prima facie case. Complainant's rights in the AMBIT mark go back to 2007[2], predating the registration of the Domain Name in 2010. Respondent's subsequent use of the Domain Name, to direct the viewer to web pages relating of solar electrical energy distribution, is an infringement of Complainant's rights in the AMBIT mark.[3] See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Turning now to Respondent's defenses, Respondent's name is Josh Koppang. Although Respondent did own a corporation having the name "Ambit.com, Inc.", that company no longer exists. And Respondent has proven only a single sale of its investment algorithm services using the Domain Name. These facts do not establish that Respondent is commonly known by the Domain Name.
Respondent's uses of the Domain Name for his investment algorithm services and his solar electrical energy referral services are commercial.
The Panel finds that notice of this dispute did not occur until the filing of the Complaint on February 14, 2013.
Prior to that time, Respondent's primary use of the Domain Name was for his solar electrical energy referral services. Respondent contends that such use was only in the form of mock marketing web pages for a third party after July 2011 and that no business was conducted through the use of those web pages. Although Respondent has substantiated his reason for the creation and posting of the web pages, he has not explained why the web pages remained on his web site for almost two years. During this period, how did Respondent provide his investment algorithm services? Certainly, he did not use the Domain Name. The only logical conclusion that the Panel can draw is that Respondent at least tried to conduct his solar electrical energy services during this period.
The Panel will consider Respondent's use of the Domain Name for his investment algorithm services in conjunction with its evaluation of the third element of the Policy. Assuming at this point that such use was bona fide, the Panel considers that the subsequent non bona fide use of the Domain Name is sufficient to establish the absence of rights and legitimate interest.
The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.
The circumstances of paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy paragraph 4(a)(iii) can be established.
Paragraph 4(b) reads:
[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In each of the circumstances listed in Policy paragraph 4(b), or otherwise, the Complainant must establish that Respondent intentionally and actively registered and used the domain name at issue for the purpose of causing injury to the Complainant. And, Respondent must have known or should have known of Complainant's mark.
Lack of rights or legitimate interests under Policy paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy paragraph 4(a)(iii). Proof of Policy paragraph 4(a)(iii) generally requires more than assertions of bad faith.
The Panel emphasizes that the Complainant must show both registration in bad faith and use in bad faith. If Complainant fails in either regard, its case for violation of the third element of the Policy fails.
The Panel finds that Respondent knew or should have known of the Domain Name prior to provision of the solar electrical energy referral services. This knowledge is inferred from the Complainant's extensive prior use and advertising in the Dallas/Fort Worth area, in which both Complainant and Respondent are located. Knowledge is also presumed from the constructive notice effect of Complainant's U.S. Trademark Registrations, whose filings predate the registration of the Domain Name.
But, Respondent's demonstrated intent and plans before and shortly after registration of the Domain Name were clearly directed to his investment algorithm services. Respondent established a corporation, a merchant account, a User Agreement, and had at least one customer during 2010 and early 2011 for those services.
Complainant has made no showing that Respondent's registration of the Domain Name was made for the purpose of selling the Domain Name to Complainant, or for preventing Complainant from reflecting the AMBIT mark in a corresponding domain name, or for disrupting the business of Complainant.
In business, there is a world of separation between the distribution of electrical energy, on the one hand, and the provision of investment services, on the other hand, even though the parties are located in the same geographical area. From the record in this proceeding, Respondent had a valid, good faith intention, when launching his investment algorithm services, to conduct that business without causing injury to the Complainant.
The fact that Respondent may have later engaged in bad faith use of the Domain Name cannot by itself obviate Respondent's prior good faith registration of the Domain Name. See Teradyne, Inc. v. 4Tel Technology, D2000-0026 (WIPO May 9, 2000) ("A conscious decision was made that UDRP proceedings be limited to abusive registrations. The question whether domain names registered in good faith become infringing is outside the scope of this inquiry"); see also PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine).
A learned and full exposition of whether later bad faith use can convert a prior good faith registration into one of bad faith can be found in Validas, LLC v. SMVS Consultancy Private Limited, D2009-1413 (WIPO JAN. 29. 2010). This Panel fully agrees with the view of the panel in that case, which stated:
In the view of this Panel, the only permissible way for this to be achieved is for ICANN to amend the Policy, paragraph 4(a)(iii) by changing “and” into “or”. Until then this Panel believes that (unsatisfying as it may be in its practical effect in the small number of cases in which it has been an issue) the view should prevail, as expressed in Weatherall Green & Smith v. Everymedia.com, WIPO Case No. D2000-1528, following Telstra, that “registration of a domain name that at inception did not breach [Policy] 4(a)(iii) but is found later to be used in bad faith does not fall foul of [Policy] 4(a)(iii)”.
Complainant contends that Respondent's later effort to sell the Domain Name to Complainant is evidence of Respondent's bad faith registration. The Panel rejects this contention. The discussions between the parties at the time of the proposed sale show nothing more than normal tactics in the game of negotiation. It may be that Respondent was very clever in setting up a "straw" business to hide his real intent at the time of registration. But, the Panel cannot come to that conclusion from the record in this proceeding.
The Panel finds that the Complainant has failed to meet its burden of proof under paragraph 4(a)(iii) of the Policy.
Complainant not having established all three elements required under the Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <ambit.com> domain name REMAIN WITH Respondent.
Bruce E. O'Connor, Panelist
Dated: April 11, 2013
[1] Both U.S. Trademark Registrations for the AMBIT ENERGY mark disclaim any exclusive rights to "ENERGY" apart from its combination with "AMBIT".
[2] Under 15 U.S.C. §1057(c), the nationwide rights under a U.S. Trademark Registration commence on the day on which the application that led to that registration was filed.
[3] As Respondent has contended, trademark infringement and unfair competition are outside the scope of the Policy. However, the presence of trademark infringement, as here, is a valid basis for the Panel to find that the Complainant has shifted the burden of proof regarding the second element of the Policy.
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