Energizer Brands, LLC v. Hulmiho Ukolen / Poste restante
Claim Number: FA1604001672224
Complainant is Energizer Brands, LLC (“Complainant”), represented by John Gary Maynard, Virginia, United States. Respondent is Hulmiho Ukolen / Poste restante (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwenergizer.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2016; the Forum received payment on April 27, 2016. The Complaint was submitted in both Finnish and English.
On May 2, 2016, Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com confirmed by e-mail to the Forum that the <wwwenergizer.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com 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 May 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 2016 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@wwwenergizer.com. Also on May 5, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On May 31, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
A. Complainant’s Contentions
1. Complainant uses the ENERGIZER mark in connection with its business of providing a wide variety of goods including batteries, flashlights, lanterns, generators, and power accessories. Complainant has registered the ENERGIZER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,177,083, registered November 10, 1981), which establishes rights in the mark. See Amended Compl., at Attached Ex. A, Attachment 1. Respondent’s <wwwenergizer.com> domain name is confusingly similar to the ENERGIZER mark as it is merely a typographical error of Complainant’s ENERGIZER mark.
2. Respondent has no rights or legitimate interests in the <wwwenergizer.com> domain name. Respondent is not commonly known by the disputed domain name, nor did Complainant authorize Respondent to use the ENERGIZER mark. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <wwwenergizer.com> domain name. Rather, the domain name resolves to a website that displays links to Complainant’s own products and products that are in direct competition with Complainant. See Amended Compl., at Attached Exs. C and D.
3. Respondent is using the <wwwenergizer.com> domain name in bad faith. Respondent’s use of the domain to host links to Complainant’s own products and products that are in direct competition with Complainant serves as a disruption of Complainant’s legitimate business purposes. Further, Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Lastly, Respondent has used a privacy service to withhold information, thereby demonstrating bad faith registration.
B. Respondent’s Contentions
1. Respondent did not submit a response for the Panel’s consideration.
Panel Note: Language of the Proceedings
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Finnish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
1. Respondent’s <wwwenergizer.com> domain name is confusingly similar to Complainant’s ENERGIZER mark.
2. Respondent does not have any rights or legitimate interests in the <wwwenergizer.com> domain name.
3. Respondent registered or used the <wwwenergizer.com> domain name in bad faith.
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 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 (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.”).
Complainant uses the ENERGIZER mark in connection with its business of providing a wide variety of goods including batteries, flashlights, lanterns, generators, and power accessories. Complainant purports to have registered the ENERGIZER mark with the USPTO (e.g., Reg. No. 1,177,083, registered November 10, 1981), and argues that its USPTO trademark registration is sufficient to establish Policy ¶ 4(a)(i) rights in the ENERGIZER mark. See Amended Compl., at Attached Ex. A, Attachment 1. Panels have found that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i), irrespective of a respondent’s country of origin. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). Therefore, this Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the ENERGIZER mark.
Next, Complainant argues that Respondent’s <wwwenergizer.com> domain name is confusingly similar to the ENERGIZER mark because the domain is simply a misspelling or typographical error that an Internet user might make when typing Complainant’s mark. The Panel notes that the disputed domain differs from the mark because of the addition of the prefix “www” followed by the ENERGIZER mark with no period separating them, and the affixation of the gTLD “.com.” Panels have held that neither a common misspelling or typo of a complainant’s mark nor the addition of the gTLD “.com” sufficiently distinguishes a disputed domain name from a mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel agrees that Respondent’s <wwwenergizer.com> domain name is confusingly similar to the ENERGIZER mark under Policy ¶ 4(a)(i).
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 (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 (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 argues that Respondent has no rights or legitimate interests in the <wwwenergizer.com> domain name. To begin, Complainant asserts that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ENERGIZER mark. The WHOIS information regarding the disputed domain name, lists “Hebei Guoji Maoyi (Shanghai) LTD DBA Hebeidomains.com” as registrant of record. Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, this Panel agrees that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <wwwenergizer.com> domain name. Rather, Complainant contends that the disputed domain resolves to a webpage that displays links to Complainant’s own products and products that are in direct competition with Complainant. See Amended Compl., at Attached Ex. C. Such links include: “Energizer Batteries” “LED Flashlight” and “Battery Charger Power Supply”. Id. Further, the disputed domain name provides advertisements for other websites, which Complainant argues are direct competitors. See Compl., at Attached Ex. D. Such advertisements include: “www.batterywarehousedirect.com/” and “www.ask.com/Duracell+Cell” and “www.energizer.com/ecoadvanced”. Id. Panels have found that such use of a domain by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”). Therefore, this Panel agrees that Respondent’s use of the <wwwenergizer.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent’s use of the <wwwenergizer.com> domain name serves as a disruption of Complainant legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because it is being used for a search engine, in addition to the inclusion of competing hyperlinks. See Amended Compl., at Attached Ex. D. Panels have agreed that where a respondent has attempted to divert Internet users to competitors of a complainant via hyperlinks related to such a complainant’s legitimate business, such use constitutes bad faith under Policy ¶ 4(b)(iii). See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum January 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)). Therefore, this Panel agrees that Respondent’s <wwwenergizer.com> domain name falls within the purview of Policy ¶ 4(b)(iii).
Further, Complainant contends that Respondent has also attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. In so arguing, Complainant asserts that Respondent uses the domain to display hyperlinks to Complainant’s own products, and products of Complainant’s competitors. Panels have held that a respondent’s use of a domain to host links to products and/or services that are in direct competition with a complainant’s business constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). As such, the Panel finds that Respondent has engaged in bad faith registration and use per Policy ¶ 4(b)(iv).
The Panel notes that Respondent has engaged a privacy service, and in doing so withholds identifying information. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Therefore, the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, and it agrees that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwenergizer.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 13, 2016
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