National Arbitration Forum

 

DECISION

 

Suzannah R. Noonan v. Kevin Sneed

Claim Number: FA1008001343308

 

PARTIES

Complainant is Suzannah R. Noonan (“Complainant”), Nevada, USA.  Respondent is Kevin Sneed (“Respondent”), Ohio, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <energyfix.com>, registered with Advanced Internet Technologies, Inc.

 

PANEL

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.

 

Michael A. Albert as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2010.

 

On August 26, 2010, Advanced Internet Technologies, Inc. confirmed by e-mail to the National Arbitration Forum that the <energyfix.com> domain name is registered with Advanced Internet Technologies, Inc. and that the Respondent is the current registrant of the name.  Advanced Internet Technologies, Inc. has verified that Respondent is bound by the Advanced Internet Technologies, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On August 31, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2010 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@energyfix.com.  Also on August 31, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 September 20, 2010.


 

On October 5, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that she owns the trademark ENERGYFIX (Reg. No. 2,472,472, registered July 24, 2001) and that the disputed domain name, <energyfix.com>, is confusingly similar to that mark.  The certificate of trademark registration annexed to the Complaint bears a filing date of April 27, 2000.

 

Complainant argues that Respondent had no legitimate rights to the disputed domain name when he renewed the domain name on August 24, 2010.  Complainant contends that Respondent did not have a product called “EnergyFix” prior to the registration of Complainant’s ENERGYFIX trademark on July 24, 2001.  Complainant contends that Respondent has never attempted to trademark the name “EnergyFix.”   

 

Complainant contends that Respondent’s use of the disputed domain name is in bad faith.  Complainant contends that Respondent is aware that his “recent registration” and renewal of the disputed domain name violate Complainant’s trademark rights.  Complainant contends that she made Respondent aware of her ENERGYFIX mark “shortly after securing her rights to the mark” and has repeatedly requested a transfer of the domain name.  Complainant contends that Respondent’s continued renewal of the disputed domain name prevents her from obtaining it to use for selling her “EnergyFix” product.  Complainant contends that, as of the date of the Complaint “and for many months prior thereto,” Respondent has not maintained a “commercial website” utilizing the disputed domain name, suggesting that Respondent is not acting in good faith by retaining the website.

 

B. Respondent

Respondent admits that the disputed domain name, <energyfix.com>, is “very similar” to Complainant’s trademark ENERGYFIX.

 

Respondent contends that he registered the disputed domain name on August 24, 1999, and that he began selling “superfood” products via a website using the disputed domain name on November 28, 1999.  The Response includes a WHOIS database report and web.archive.org report reflecting these two dates.  The web.archive.org report indicates that Respondent’s website was active for at least eight and a half years.  Respondent contends that Energyfix.com Inc. was incorporated in the state of Ohio on December 15, 2000.  The Response includes a certificate of incorporation from the Ohio Secretary of State for Energyfix.com Inc. dated December 15, 2000.  Respondent contends that current and future plans for the website he maintains at the disputed domain name include promoting books, audios, and videos related to his life-long work and interests.

 

Respondent contends that he did not know of the Complainant or the use of the name “EnergyFix” as a product when he registered the disputed domain name.  Respondent contends that, at the time he first registered the disputed domain name, Internet search engines did not report any “EnergyFix” food product or food supplement other than Respondent’s.  Respondent denies receiving any requests for transfer of the disputed domain name from Complainant.  Respondent denies that its purpose in renewing the disputed domain name is to keep it from Complainant.

 

Respondent asks the Panel to consider whether Complainant has attempted reverse domain-name hijacking.  Respondent contends that Complainant’s attempt to obtain the disputed domain name is in bad faith because Respondent was already using the disputed domain name “for similar purposes in business on the Internet” when Complainant filed her ENERGYFIX trademark application.  Respondent contends that the “due diligence” of a domain name search would have informed Complainant that a company was selling superfood products through a website at the disputed domain name at the time Complainant filed her application.  Respondent points out that the ENERGYFIX trademark registration attached to the Complaint reports a first use of the mark on April 1, 2000.

 

FINDINGS

While the <energyfix.com> domain name is identical to Complainant’s ENERGYFIX mark, Complainant has not established that Respondent lacks rights or legitimate interests in the domain name, nor has Complainant established registration and use in bad faith.  Respondent registered the <energyfix.com> domain name on August 24, 1999, over seven months prior to Complainant’s first use of the ENERGYFIX mark on April 1, 2000.  Respondent established rights and a legitimate interest in the domain name at least as of November 28, 1999, when it began offering nutrition products via a website at the disputed domain name.  These bona fide sales began over four months prior to Complainant’s first use of the ENERGYFIX mark.  The Panel denies the relief requested in the Complaint, and finds, pursuant to paragraph 15(e) of the Rules, that the Complaint was brought in bad faith in an attempt at reverse domain name hijacking.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2)      the 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.

 

Identical and/or Confusingly Similar

 

Complainant’s registration of the ENERGYFIX mark (Reg. No. 2,472,472 issued July 24, 2001) establishes that Complainant has rights in the mark pursuant to Policy ¶ 4(a)(i).  See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).  The disputed domain name, <energyfix.com>, is identical to Complainant’s ENERGYFIX trademark, since the generic top-level domain name “.com” is insufficient to distinguish the domain name from the trademark.  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 “.com” after the name POMELLATO is not relevant).  Complainant has established that the domain name registered by Respondent is identical to a trademark in which Complainant has rights.

 

Rights or Legitimate Interests

 

Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent does not have his own ENERGYFIX trademark and did not establish rights in such a mark prior to Complainant’s filing for her trademark.  A Respondent, however, need not have acquired trademark rights in order to have “rights or legitimate interests” in a domain name.  See Policy ¶ 4(c)(ii) (providing that rights or legitimate interests are established if the Respondent has been “commonly known by the domain name, even if [it has] acquired no trademark or service mark rights”).  Complainant has not made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.

     

Furthermore, the evidence supports the conclusion that Respondent does in fact have rights and legitimate interests in the disputed domain name.  Respondent began offering nutrition products via a website at the disputed domain name on November 28, 1999, over four months prior to Complainant’s first use of the ENERGYFIX mark on April 1, 2000.  Under Policy ¶ 4(c)(i), use of a domain name in connection with a bona fide offering of goods is sufficient to establish rights or legitimate interests in the domain name for purposes of ¶ 4(a)(ii).  Respondent operated an online store using the disputed domain name for at least eight and a half years, beginning four months prior to Complainant’s first use of the ENERGYFIX mark and twenty-one months prior to the registration of that mark.  By doing so, Respondent established his rights and legitimate interest in the disputed domain name.  See EAuto, Inc. v. E Auto Parts, Inc., D2000-0121 (WIPO April 13, 2000). 

 

Complainant has not established that Respondent lacks rights or legitimate interests in the disputed domain name.

     

Registration and Use in Bad Faith

 

Respondent registered the <energyfix.com> domain name on August 24, 1999, over seven months prior to Complainant’s first use of the ENERGYFIX mark on April 1, 2000.  Respondent’s registration of the mark cannot have been in bad faith.  See Dreamgirls, Inc. v. Dreamgirls Entert., D2006-0609 (WIPO August 10, 2006) (“Bad faith registration cannot be found if the Domain Name was registered before Complainant acquired trademark rights.  The consensus view of WIPO panelists, as reported in the WIPO Decision Overview, is that ‘when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.’  WIPO Decision Overview at § 3.1.”); Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark). 

 

After his initial registration of the mark, Respondent acquired rights and legitimate interests in the disputed domain name by using the domain name in connection with the bona fide sale of goods.  Respondent therefore has not used the disputed domain name in bad faith.  See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent’s rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”). 

 

Complainant has failed to establish that the disputed domain name has been registered and is being used in bad faith.

 

Reverse Domain Name Hijacking

 

Paragraph 15(e) of the UDRP Rules states: “If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”  Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

 

The Panel is troubled by Complainant’s attempt to secure <energyfix.com>, a domain name that was registered and used to sell goods for months before Complainant’s first use of the ENERGYFIX mark.  A simple WHOIS search would have informed Complainant that the disputed domain name had been registered seven months before her first use of the ENERGYFIX mark and therefore could not have been registered in bad faith.  It is also evident from the Complaint that Complainant was aware that Respondent was selling goods using the disputed domain name, one of the activities that gives rise to rights and legitimate interests in a domain name. 

 

Where, as here, a domain name was registered before the complainant established its trademark rights, the complainant will not be able to establish bad faith registration.  Panels have found reverse domain name hijacking when a complaint is brought in such circumstances.  Collective Media, Inc. v. CKV / Collectivemedia.com, D2008-0641 (WIPO July 31, 2008); Dreamgirls, Inc. v. Dreamgirls Entert., D2006-0609 (WIPO August 10, 2006); Primal Quest, LLC v. Gabriel Salas, D2005-1083 (WIPO December 15, 2005); carsales.com.au Ltd. v. Alton L. Flanders, D2004-0047 (WIPO April 8, 2004); see Goldline International, Inc v. Gold Line, D2000-1151 (WIPO January 4, 2001) (finding reverse domain name hijacking where “Respondent’s registration and use of the domain name could not, under any fair interpretation of the facts, constitute bad faith”).

 

A long delay in filing a complaint can also give rise to an inference that a complainant with a flawed claim knew that it had a flawed claim, providing further support for a finding of bad faith.  Dreamgirls, Inc. v. Dreamgirls Entert., D2006-0609 (WIPO August 10, 2006) (proceeding initiated ten years after domain name was registered, and two years after Complainant acknowledged that it was aware of respondent).  Respondent registered <energyfix.com> eleven years before Complainant initiated this proceeding.  Complainant alleges that she made Respondent aware of her ENERGYFIX mark “shortly after securing her rights to the mark” and requested transfer of the domain name at that time.  Based on her own allegations, then, she waited for approximately nine years after that request to file her Complaint.  A basic WHOIS search during those nine years would have informed Complainant of the date on which Respondent had registered the disputed domain name.  While the facts as to Complainant’s actual knowledge cannot be established with certainty, the Panel concludes that the weight of the evidence indicates that Complainant was aware that she was not entitled to transfer of the <energyfix.com> domain name.

 

The Panel therefore finds that the Complaint was brought in bad faith under paragraph 15(e) of the Rules.

 

DECISION

Having considered all three elements required under the ICANN Policy, the Panel concludes that Complainant’s request for relief shall be DENIED.  The Panel also finds that the Complaint was brought in bad faith under paragraph 15(e) of the Rules in an attempt at reverse domain name hijacking.

 

 

 

Michael A. Albert, Panelist
Dated: October 22, 2010

 

 

 

 

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