Energy Transfer LP v. Ned Gligich
Claim Number: FA2007001904951
Complainant is Energy Transfer LP (“Complainant”), represented by Laura M. Franco of Winston & Strawn LLP, United States. Respondent is Ned Gligich (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <energytrarsfer.com>, registered with Wild West Domains, Llc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2020; the Forum received payment on July 20, 2020.
On July 21, 2020, Wild West Domains, Llc confirmed by e-mail to the Forum that the <energytrarsfer.com> domain name is registered with Wild West Domains, Llc and that Respondent is the current registrant of the name. Wild West Domains, Llc has verified that Respondent is bound by the Wild West Domains, 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 July 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 2020 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@energytrarsfer.com. Also on July 22, 2020, 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 August 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Energy Transfer LP, is a provider of midstream energy services in the United States. Complainant has common law rights in the ENERGY TRANSFER mark based upon use of the mark in commerce. Respondent’ <energytrarsfer.com> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s ENERGY TRANSFER mark, but adds a typo by changing the letter “n” in “transfer” to an “r.”
Respondent does not have rights or legitimate interests in the <energytrarsfer.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the ENERGY TRANSFER mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent disrupts Complainant’s business by diverting Internet users away from Complainant’s website and passively holds the disputed domain name as the resolving webpage is inactive.
Respondent registered and uses the <energytrarsfer.com> domain name in bad faith. Respondent uses the disputed domain name as part of an email scam. Additionally, Respondent engages in typosquatting. Furthermore, Respondent had actual knowledge of Complainant’s rights in the ENERGY TRANSFER mark at the time of domain name registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a provider of midstream energy services in the United States.
2. Complainant has established its common law trademark rights in the ENERGY TRANSFER mark based upon use of the mark in commerce since 1995.
3. Respondent registered the disputed domain name on July 7, 2020.
4. Respondent has used the domain name to disrupt Complainant’s business by diverting Internet users away from Complainant’s website and as part of an email scam.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ENERGY TRANSFER mark based upon common law rights. Under Policy ¶ 4(a)(i), a complainant is not required to own a registered trademark prior to the registration of the disputed domain name so long as the complainant can establish common law rights in the mark. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Therefore, the Panel finds that Complainant need not provide evidence of trademark registration to show rights in the ENERGY TRANSFER mark.
The next question that arises is whether Complainant has established common law rights in the ENERGY TRANSFER mark based on its use of the mark in commerce since 1995. Common law rights in a mark may be established through evidence that the mark has acquired a secondary meaning. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Complainant provides evidence that the ENERGY TRANSFER mark has acquired a secondary meaning in connection with Complainant’s use of the mark to provide natural gas services since 1995 as well as Complainant’s promotion of the mark on its website and social media pages and its wide involvement in commerce and charitable activities. See Compl. Annexes E, F, H, I, & J. The Panel therefore finds that Complainant has sufficiently established its common law rights in the ENERGY TRANSFER mark.
The next question that arises is whether Respondent’s <energytrarsfer.com> domain name is identical or confusingly similar to Complainant’s ENERGY TRANSFER mark. Complainant submits that the domain name is confusingly similar to the trademark because it incorporates the mark and simply switches the letter “n” for the letter “r” in the word “transfer.” The Panel notes that the disputed domain name also appends the “.com” gTLD to the mark. Under Policy ¶ 4(a)(i), simple misspellings of a word and addition of a gTLD are insufficient to distinguish a domain name from a mark. See WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s ENERGY TRANSFER mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
(a) Respondent has chosen to take Complainant’s ENERGY TRANSFER trademark and to use it in its domain name, making a minor spelling alteration which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on July 7, 2020;
(c) Respondent has used the domain name to disrupt Complainant’s business by diverting Internet users away from Complainant’s website and as part of an email scam;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <energytrarsfer.com> domain name because Respondent’ is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the ENERGY TRANSFER mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). Here, the WHOIS information lists “Ned Gligich” as the registrant and no information suggests Complainant has authorized Respondent to use the ENERGY TRANSFER mark. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent disrupts Complainant’s business by diverting Internet users to Respondent’s inactive webpage. Use of a disputed domain name generally to divert Internet users is not considered 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 Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Gen. Mills, Inc. v. Zuccarini, FA 97050 (Forum May 30, 2001) (“[U]nder the “Policy,” Respondent may not utilize close derivations of famous and distinctive trademarks and, thus, profit from Internet users’ misspelling the Internet destinations they desire.”). Additionally, failure to host an active webpage does support a finding that a respondent lacks rights and legitimate interests in the disputed domain name. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the resolving webpage of the disputed domain name showing an inactive error message. See Compl. Annex L. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain name for 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).
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the articulated provisions of Policy ¶ 4(b) are meant to be merely illustrative of bad faith, and Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant thus argues that Respondent’s bad faith is evidenced by its registration and use of the <energytrarsfer.com> domain name in connection with a phishing email scam. The use of a disputed domain name to engage in fraud and send phishing emails is evidence of bad faith under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Airbnb, Inc. v. JAMES GRANT, FA1760182 (Forum December 28, 2017) (“Using a misleading email address to defraud unwary customers certainly constitutes bad faith.”). Complainant provides evidence that Respondent used the disputed domain name to pose as Complainant’s employee in emails sent to Complainant’s customer in order to divert payment to Respondent’s own account. See Compl. Annex M. Thus, the Panel finds bad faith registration and use of the disputed domain name persuant to Policy ¶ 4(a)(iii).
Secondly, Complainant argues that Respondent registered and uses the <energytrarsfer.com> domain name in bad faith because Respondent engages in typosquatting. Under Policy ¶ 4(a)(iii), deliberate misspelling of a mark is considered typosquatting, which is itself evidence of bad faith registration and use of a disputed domain name. See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Complainant contends that Respondent engages in typosquatting since Respondent used a common misspelling of “transfer” by replacing the letter “n” with the letter “r” in the disputed domain name. As the Panel agrees, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the ENERGY TRANSFER mark at the time the disputed domain name was registered. Under Policy ¶ 4(a)(iii), actual knowledge may be found based upon a mark’s fame and the manner in which the disputed domain name is used. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant argues that Respondent must have had knowledge of Complainant’s rights in the ENERGY TRANSFER mark due to Complainant’s extensive use of the mark since 1995, Respondent’s use of typosquatting in the domain name, and Respondent’s use of Complainant’s information in connection with its email phishing scheme. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the ENERGRY TRANSFER mark and thus registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <energytrarsfer.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 19, 2020
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