Direct Energy Marketing Limited v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation
Claim Number: FA1712001762706
Complainant is Direct Energy Marketing Limited (“Complainant”), represented by Meredith Phillips of IPWatch Corporation, Alabama, USA. Respondent is DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation (“Respondent”), represented by William A. Delgado of WILLENKEN WILSON LOH & DELGADO LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <directenergyprojects.com> and <directenergyhq.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.
Héctor Ariel Manoff as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 13, 2017; the Forum received payment on December 13, 2017.
On Dec 14, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <directenergyprojects.com> and <directenergyhq.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 2018 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@directenergyprojects.com, postmaster@directenergyhq.com. Also on December 15, 2017, 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 January 2, 2018.
On January 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Héctor Ariel Manoff 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, Direct Energy Marketing Limited, is a well-known leader in the home services and energy industries.
2. Complainant has rights in the DIRECT ENERGY and DIRECT ENERGY HQ marks based upon its registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g. DIRECT ENERGY—Reg. No. 2,658,962, registered Dec. 10, 2002; DIRECT ENERGY HQ—Reg. No. 5,085,132, registered Nov. 22, 2016). See Compl. Annex I.
3. Respondent’s <directenergyhq.com> domain name is identical to Complainant’s DIRECT ENERGY HQ mark.
4. Respondent’s <directenergyprojects.com> and <directenergyhq.com> domain names are confusingly similar to the DIRECT ENERGY mark;
5. Respondent has no rights or legitimate interests in the <directenergyprojects.com> and <directenergyhq.com> domain names as Respondent is not commonly known by either of the names.
6. Respondent’s has never used the names for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
7. Respondent is merely cybersquatting to prevent Complainant from registering domains.
8. Respondent registered and is using the <directenergyprojects.com> and <directenergyhq.com> domain names in bad faith.
9. Respondent registered the names with the intent of profiting from the sale of the names; the WHOIS information for both domains indicates that they may be for sale. Annex II.
10. Respondent’s failure to actively use the domain names both serves to tarnish Complainant’s brand, and is independent evidence of bad faith.
11. Due to the distinctiveness and fame of Complainant’s marks, Respondent clearly had constructive or actual knowledge of Complainant and its rights when it registered the domain names.
B. Respondent
1. Respondent does not respond to the allegations in the Complaint.
2. Respondent owns a portfolio of generic and descriptive domain names which it acquired through lawful and fair methods.
3. Respondent has a dispute-resolution policy whereby it invites putative complainants to contact it regarding domain names that complainants believe violate a trademark.
4. It has a liberal transfer policy whereby it usually agrees to voluntarily transfer domain names, irrespective of the legitimacy of the complainant’s arguments in order to avoid the time and expense of administrative hearings.
5. Upon learning of this matter, Respondent contacted Complainant to offer a voluntary transfer of the domain name at issue and Complainant did not respond.
6. Respondent is willing to voluntarily transfer the domain name without admitting fault or liability.
7. Respondent requests the transfer be ordered without findings of fact or conclusions as to Policy ¶ 4(a).
Preliminary Issue: Consent to Transfer
Respondent claims to have consented to transfer the <directenergyprojects.com> and <directenergyhq.com> domain names to Complainant. No evidence of this fact was produced by either party. Apparently, Complainant never responded to this offer and started a UDRP proceeding.
Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain names without a decision on the merits by the Panel. The Panel finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Spectrum Brands, Inc. v. Guo Li Bo - Claim Number: FA1711001760233 (Forum January 5, 2018) ( In correspondence with the Forum, Respondent consented to transfer the <spectrunnbrands.com> domain name to Complainant. However, the Panel notes that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them).
This Panel finds that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Complainant, Direct Energy Marketing Limited, is a well-known leader in the home services and energy industries which has been using its DIRECT ENERGY marks for over 10 years. Respondent registered the disputed domain names <directenergyprojects.com> and <directenergyhq.com> which are confusingly similar and may be associated with Complainant’s firm and marks.
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.
Complainant claims rights in the DIRECT ENERGY and DIRECT ENERGY HQ marks based upon registration with the USPTO (e.g. DIRECT ENERGY—Reg. No. 2,658,962, registered Dec. 10, 2002; DIRECT ENERGY HQ—Reg. No. 5,085,132, registered Nov. 22, 2016). See Compl. Annex I. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
This Panel finds that Complainant’s registration of the DIRECT ENERGY and DIRECT ENERGY HQ marks with the USPTO is sufficient to establish rights therein per Policy ¶ 4(a)(i).
This Panel finds that <directenergyprojects.com> and <directenergyhq.com> domain names are confusingly similar to the DIRECT ENERGY mark since small changes to a mark, such as the omission of spaces and addition of descriptive terms and generic top-level domain names “gTLDs” are not changes sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”).
The Panel points out that the <directenergyhq.com> domain name is identical to the DIRECT ENERGY HQ mark according to Policy ¶ 4(a)(i) since the name contains the mark in its entirety and merely differs by the removal of spacing and addition of a gTLD. See Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“Complainant also asserts that Respondent’s <researchnow.host>, <researchnow.top> and <researchnow.club> domain names are confusingly similar to Complainant’s mark because each merely eliminates the space and appends a gTLD to the fully incorporated mark. The addition of a gTLD and elimination of spacing are both considered irrelevant when distinguishing between a mark and a domain name.”).
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 <directenergyprojects.com> and <directenergyhq.com> domain names, as Respondent is not commonly known by the disputed domain name. The WHOIS information of record identifies Respondent as “DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Domain Registries Foundation” and WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Thus, this Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <directenergyprojects.com> and <directenergyhq.com> domain names.
Respondent is inactively holding the disputed domain names and this Panel finds that it indicates Respondent does not have rights or legitimate interests in them. Inactive holding of a domain name does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
WHOIS information of both disputed domain names indicates they are for sale. See Compl. Annex II. General offers to sell a domain name can be evidence of bad faith per Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). The Panel finds Respondent to have registered and used the domain names in bad faith per Policy ¶ 4(b)(i).
This Panel noticed that the <directenergyhq.com> domain name includes an exact mark and not just generic terms and this action is a registration in bad faith.
In addition, registration of multiple domain names incorporating a complainant’s mark can demonstrate a pattern of bad faith registration, and such a pattern can show bad faith per Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)); see also Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”).
Complainant also asserts that Respondent’s failure to use the <directenergyprojects.com> and <directenergyhq.com> domain names is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel may recall Complainant’s (unsupported) contention that the domain names do not resolve to an active website. This Panel finds that Respondent’s inactive holding of the domain name to be evidence of its bad faith per Policy ¶ 4(a)(iii).
Complainant also contends that in light of the fame and notoriety of Complainant's DIRECT ENERGY mark, it is inconceivable that Respondent could have registered the <directenergyprojects.com> and <directenergyhq.com> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The registration of the <directenergyhq.com> domain name which includes not only generic terms but the combination of letters HQ as Complainant’s marks is sufficient for this Panel to conclude that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <directenergyprojects.com> and <directenergyhq.com> domain names be TRANSFERRED from Respondent to Complainant.
Héctor Ariel Manoff, Panelist
Dated: January 11, 2018
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