Energizer Brands, LLC v. Ashok Saroye / Ever ready
Claim Number: FA1604001672226
Complainant is Energizer Brands, LLC (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Ashok Saroye / Ever ready (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ever-ready-commercial.com>, registered with REGISTER.IT SPA.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2016; the Forum received payment on April 27, 2016.
On April 28, 2016, REGISTER.IT SPA confirmed by e-mail to the Forum that the <ever-ready-commercial.com> domain name is registered with REGISTER.IT SPA and that Respondent is the current registrant of the name. REGISTER.IT SPA has verified that Respondent is bound by the REGISTER.IT SPA 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 April 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@ever-ready-commercial.com. Also on April 28, 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 June 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant uses the EVEREADY mark in connection with its business in the battery, flashlight, lantern, generator, and power accessory industry. Complainant has registered the disputed domain name with multiple governmental authorities worldwide, notably with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <ever-ready-commercial.com> domain name is confusingly similar to the EVEREADY mark as the domain incorporates a phonetically identical form of EVEREADY by incorporating hyphenation and adding an “r,” it adds the descriptive term “commercial,” and lastly the generic top-level domain (“gTLD”) “.com.”
Respondent does not have any rights or legitimate interests in the <ever-ready-commercial.com> domain name. Respondent is not commonly known by the disputed domain name, although the WHOIS of record seems to suggest as much. Further, Respondent has not used the disputed domain in connection with any bona fide offering goods or services or a legitimate noncommercial or fair use. Instead, Respondent’s <ever-ready-commercial.com> domain name resolves to a page displaying a search engine and “related links.” Further, Internet users can reach competitors by using the included search engine.
Respondent registered and used the disputed domain in bad faith. Competing hyperlinks and inclusion of a search engine that can be used to access links of Complainant’s competitors constitutes disruption under Policy ¶ 4(b)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the EVEREADY mark through its registration of such mark with the USPTO and through its other registrations worldwide.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Respondent used the at-issue domain name to address a webpage that displays related hyperlinks and includes a search engine device that can be used to access links to Complainant’s competitors.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its EVEREADY mark with the USPTO and elsewhere worldwide establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Capital One Financial Corp. v. Paydayloanz.com, FA1463493 (Nat. Arb. Forum October 22, 2012) (concluding that Complainant has “secured rights in its CAPITAL ONE mark through its various global trademark registrations.”).
The at-issue domain name starts with Complainant’s EVEREADY trademark but with a hyphen separating its component terms, adds another hyphen and the generic term “commercial,” which is suggestive of Complainant’s use of the mark in commerce, and ends with the generic top-level domain name “.com”. However, the differences between Respondent’s domain name and Complainant’s EVEREADY trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that the <ever-ready-commercial.com> domain name is confusingly similar to Complainant’s EVEREADY mark under Policy ¶ 4(a)(i). See Fil-Tech, Inc. v. Tangidyne Corp, FA 1569093 (Forum Sept. 2, 2014) (holding, “The disputed domain name <phil-tech.com> is confusingly similar to Complainant’s FIL-TECH mark as the name is phonetically identical to the mark.”); see also, Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Allstate Insurance Company v. HI-LIVE / TRIAL VERSION, FA 1621874 (Forum July 8, 2015) (stating, “As a general rule, both punctuation-related alterations (such as adding a hyphen) and the addition of a gTLD are insufficient to distinguish a domain name from the mark at issue.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Ashok Saroye / Ever ready” as the domain name’s registrant however there is nothing in the record that suggests Respondent is commonly known by the <ever-ready-commercial.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). . See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”).
Respondent uses the at-issue domain name to offer a search engine and Complainant related links. The links include “Commercial Solar,” “Commercial LED Lights,” and “Commercial Battery Charger.” The search engine may be used to reach Complainant’s competitors. Using the confusingly similar domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
Registration and Use in Bad Faith
As mentioned above regarding rights and interests, Respondent uses the domain name to display links related to Complainant and to offer a search engine that might be used to reach Complainant’s competition. Such use of the confusingly similar <ever-ready-commercial.com> domain name demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii). Therefore, the Panel concludes that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(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 <ever-ready-commercial.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 7, 2016
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