Energizer Brands, LLC v. CLAIRE WILSON
Claim Number: FA1608001687643
Complainant is Energizer Brands, LLC (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is CLAIRE WILSON (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <energizer-holdings.com>, registered with Crazy Domains FZ-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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2016; the Forum received payment on August 10, 2016.
On August 14, 2016, Crazy Domains FZ-LLC confirmed by e-mail to the Forum that the <energizer-holdings.com> domain name is registered with Crazy Domains FZ-LLC and that Respondent is the current registrant of the name. Crazy Domains FZ-LLC has verified that Respondent is bound by the Crazy Domains FZ-LLC 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 August 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@energizer-holdings.com. Also on August 15, 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. An E-Mail was received from Respondent on August 20, 2016, but this did not appear to be a Response (see below). A subsequent E-Mail of September 15, 2016, also did not appear to be a Response (see below).
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is one of the world’s leading battery manufacturers, and markets and distributes some of the most recognizable and valuable brands in its industry, including it famous ENERGIZER brand. Complainant registered its ENERGIZER mark with the United States Patent and Trademark Office (“USPTO”) in 1981. The mark is famous around the world.
According to Complainant, the disputed domain name is confusingly similar to Complainant’s mark because it incorporates the mark in its entirety and merely adds a hyphen and the generic term “holdings,” and the “.com” generic top-level domain (“gTLD”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its ENERGIZER mark in any fashion, and Respondent is not commonly known by the terms of the disputed domain. Respondent is using the domain name to host a commercial search engine that contains “sponsored results” with hyperlinks to both Complainant and Complainant’s competitors. Such use does not constitute a bona fide offering of goods and services, nor does it constitute a legitimate noncommercial or fair use of the disputed domain name.
Further, says Complainant, Respondent has engaged in bad faith registration and use of the domain name. The search engine and related hyperlinks on the resolving website divert Internet users away from Complainant and, thus, disrupt its business under Policy ¶ 4(b)(iii). The “sponsored” hyperlinks also create the presumption that Respondent is commercially gaining when Internet users click on a link, and such benefit from a likelihood of confusion of the source, sponsorship, affiliation, or endorsement of the disputed domain name is in violation of Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, Ms Claire Wilson sent the following E-Mail on August 20, 2016 (the text of the E-Mail is reproduced verbatim):
Hi. I am emailing you regarding a letter i recieved in the post today. The letter states that an email account that doesnt belong to me has 'improper use of energizer-holdings.com domain name'. This email address and any website set up using this email address has no connection to me.
I dont know how or why the email address is connected to my name (my maiden name anyway) or how the person using the email address has connected it to my address but it has nothing to do with me. I have received a similar letter in the past and have previously contacted the company asking if there Is any way that the account connected to energizer could be deleted their end as it is obviously a fraudulent account as i have not given my consent to anybody to use my name or address on that site, yet i have now received a second letter. The domain name is definitely nothing to do with me just to make that clear. I would appreciate if you could reply to me using this email address. Many thanks
On September 15, 2016, Ms Wilson sent another E-Mail stating (verbatim): “I do not understand what this is all about. I have contacted you on many occasions to explain they the email address used is nothing to do with me.”
Complainant owns rights in the mark ENERGIZER dating back to 1981. The mark is famous.
The disputed domain name was registered in 2016.
The Respondent of record, a physical person, states that her name and address were used fraudulently to register the disputed domain name.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent uses the disputed domain name to promote links to products and services that compete with those of Complainant.
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 disputed domain name is confusingly similar to Complainant’s ENERGIZER mark, at it merely adds a hyphen and the generic term “holdings” to the fully incorporated ENERGIZER mark, plus the “.com” gTLD. Panels have found that the addition of a generic term and a gTLD suffix still made a domain name confusingly similar to a mark that complainant had rights in. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Panels have also found that the addition of a hyphen does not serve to distinguish adequately a respondent’s domain from a complainant’s mark under Policy ¶ 4(a)(i). See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”). Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its ENERGIZER mark in any fashion. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The Panel notes the WHOIS information for <energizer-holdings.com> lists the registrant as “Claire Wilson,” and that such information may be used to infer Respondent is not commonly known by the domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Therefore the Panel finds that Respondent is not commonly known by the disputed domain name.
Further, the Panel notes that Ms Claire Wilson states that her name has been fraudulently used to register the disputed domain name.
Respondent is not using the disputed domain name to make a bona fide offering of goods and services or a legitimate noncommercial or fair use. Indeed, the disputed domain name resolves to a site with a commercial search engine and various sponsored links to Complainant’s business and its competitors. Panels have held that displaying hyperlinks that compete with a complainant’s business is not a bona fide offering of goods and services or a legitimate noncommercial or fair use of a disputed domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel thus finds Respondent in violation of Policy ¶¶ 4(c)(i) and (iii).
Respondent did not submit a formal reply. Ms Claire Wilson, the Respondent of record, states that her name and address were used fraudulently to register the disputed domain name. Respondent has not presented any plausible explanation for its use of Complainant’s famous mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name, and this in particular in light of the allegedly fraudulent use of Ms Wilson’s name.
As already noted, the disputed domain name is disrupting Complainant’s business by diverting Internet users looking for Complainant’s products to use Respondent’s third-party search engine or click on one of the competing hyperlinks. Previous panels have found bad faith under Policy ¶ 4(b)(iii) where the respondent is hosting links to a complainant’s competitors on a disputed domain name. 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).”). Thus, the Panel finds Respondent to have registered the domain name primarily for the purpose of disrupting Complainant’s business.
Further Respondent is using the disputed domain name in violation of Policy ¶ 4(b)(iv). Respondent is presumably commercially gaining because of the “sponsored” results appearing on the resolving website of the disputed domain name. Respondent’s commercial gain comes at the expense of Complainant’s ENERGIZER mark, because the disputed domain name creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement with the goodwill around the ENERGIZER mark. Previous panels have found respondents in bad faith under Policy ¶ 4(b)(iv) where the domain hosts competing hyperlinks that mislead Internet users. See Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”). Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <energizer-holdings.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: September 16, 2016
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