Clean Power Finance, Inc. v. Scott Cronk / Energy Matters
Claim Number: FA1410001586964
Complainant is Clean Power Finance, Inc. (“Complainant”), represented by Brian P. Hennessy of Perkins Coie LLP, California, USA. Respondent is Scott Cronk / Energy Matters (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cpf-tools.com> and <clean-power-finance-tools.com>, registered with Domain.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.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 27, 2014; the National Arbitration Forum received payment on October 27, 2014.
On October 30, 2014, Domain.Com, Llc confirmed by e-mail to the National Arbitration Forum that the <cpf-tools.com> and <clean-power-finance-tools.com> domain name are registered with Domain.Com, Llc and that Respondent is the current registrant of the names. Domain.Com, Llc has verified that Respondent is bound by the Domain.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 October 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 2014 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@cpf-tools.com, postmaster@clean-power-finance-tools.com. Also on October 31, 2014, 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 November 3, 2014.
Complainant submitted a complaint Additional Submission on November 7, 2014.
A timely response was received from the Respondent to the Additional Submission of the Complainant on November 8, 2014
On November 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed dr. Katalin Szamosi as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant argues that under Policy ¶ 4(a)(i) Respondent’s <cpf-tools.com> domain name identical to Complainant’s CPF TOOLS mark and <clean-power-finance-tools.com> domain name is confusingly similar to Complainant’s CLEAN POWER FINANCE mark. In support of this Complainant asserts that
· the marks are registered with the United States Patent and Trademark Office ("USPTO") (CLEAN POWER FINANCE—Reg. No. 3,888,312, registered Dec. 7, 2010) (CPF TOOLS 4,369,567 registered July 16, 2013, filed March 19, 2012);
· Respondent did nothing more than add a hyphen between the words and word “tool” and “.com” onto the end.
2. Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). In support of this Complainant asserts that
· Respondent is not known by the names <cpf-tools.com> and <clean-power-finance-tools.com>; and,
· CPF TOOLS, CLEAN POWER FINANCE, and the CPF Family of Marks are associated exclusively with Complainant.
3. Complainant argues that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). In support of this Complainant contends that
· Respondent’s used the domain name <cpftools.com> and <clean-power-finance-tools.com> to attract Internet users to Respondent’s own commercial website; and,
· Respondent’s used the domain name <cpf-tools.com> and <clean-power-financetools.com> to disrupt Complainant’s competing business.
B. Respondent
Respondent's arguments can be summarized as follows.
· The domain names <cpf-tools.com> and <clean-power-finance-tools.com> are made up of generic terms which have meaning beyond Complainant’s trademarks.
· He used both domain names to host comparison websites that provided reviews and critiques of an array of Complainant’s offerings along with competing offers.
· He did not act in bad faith, it merely sought to review products for consumers.
C. Additional Submissions
Complainant’s asserts the following in its Additional Submission that
a) Respondent seeks to disrupt Complainant’s business by using both domain names to host a promotion for a competing enterprise;
b) hosting of a competing business through the disputed domain names’ website evidences an intent to capitalize on a likelihood of confusion as to Complainant’s association with the disputed domain names vis-à-vis the two trademarks;
c) Respondent cannot rest on a claim that it used the domain name’s because they are generic. A generic use of a domain name would be the ordinary use of those terms. Here the domain name led to a website wherein the trademark goods were specifically mentioned.
Respondent’s asserts the following in his Additional Submission that
a) there is no evidence that anyone has ever been confused by use of the Domains;
b) it provided explanation and evidence in its Response that it has legitimate interests in the Domains whereas the Complainant provided no evidence to the contrary.
Complainant is the owner of the trademarks registered with the USPTO, CLEAN POWER FINANCE (Reg. No. 3,888,312, registered Dec. 7, 2010) and CPF TOOLS (4,369,567 registered July 16, 2013, filed March 19, 2012).
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.
The Panel determined that Complainant submitted sufficient evidence (Complainant’s Exhibit Annex 6a and 6c) that it has rights in the CLEAN POWER FINANCE and CPF TOOLS marks based its registrations with the USPTO.
Panel finds that USPTO registrations constitute sufficient evidence of Policy ¶ 4(a)(i) rights dating back to the filing date of the respective trademarks. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Panel agrees with the Complainant that the <cpf-tools.com> domain name and the CPF TOOLS mark are effectively identical under Policy ¶ 4(a)(i). See, e.g., George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark).
Further, the Panel finds that the both domain names includes hyphens and adds the irrelevant gTLD “.com. whereas in the <clean-power-finance-tools.com> domain name it additionally contains the term “tools” never the less both domain names are confusingly similar to Complainants CLEAN POWER FINANCE and CPF TOOLS trademarks under Policy ¶ 4(a)(i). See Alticor Inc v. Cao Mai, FA1521565 (Nat. Arb. Forum Nov. 5, 2013) (stating that, “the domain name buy-artistry.com is unquestionably confusingly similar to [c]omplainant’s famous ARTISTRY mark” as a result of the domain name differing from the complainant’s mark by no more than the generic term “buy” and a hyphen).
Based on the above the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s trademarks under Policy ¶ 4(a)(i).
As to the second element, 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 (Nat. Arb. Forum Aug. 18, 2006).
The Panel finds that as Respondent has not alleged that it has any right to use the marks in trade, or that Respondent has identified itself as the <cpf-tools.com> and <clean-power-finance-tools.com> domain names, there is no basis for finding for Respondent under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel notes the WHOIS information for the disputed domain name lists “Scott Cronk” as registrant.
The Panel notes that the <cpf-tools.com> domain name evidently resolved to a website featuring generic hyperlink advertisements (Respondent Exhibit Annex 15). The Panel finds that using a domain name to promote generic hyperlinks in any fashion is a use devoid of any Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial use as Respondent here is merely trading upon the confusing similarity between the mark and the domain name and generating advertising revenue in the process. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
Furthermore the Panel notes that at one point both domain names evidently resolved to the <energyperiscope.com> domain name, wherein Complainant’s CPF TOOLS line of goods were compared versus the competing ENERGYPERISCOPE goods (Respondent Exhibit Annex. 16c–16d.). The Panel finds that Respondent is essentially promoting the competing goods through the website, without a legitimate “review” and as such Respondent lacks rights and legitimate interests in using identical and confusingly similar domain names to promote a competing product line. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel notes - in concurrence with the Complainant - that Respondent cannot rest on a claim that it used the domain name’s because they are generic and merely provide free speech/reviews because here the domain name led to a website wherein the trademark goods were specifically mentioned. Therefore the Panel finds that Respondent has no right to use infringing domain names to review or criticize Complainant’s products, as a right to the speech content of a website is distinct from a right to use confusingly similar domain names. See, e.g., Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected. Free speech cannot be used as a defence against the use of a confusingly similar mark as a domain name.”).
The Panel finds that the use of the domain names in the past to promote a competing line of products is evidence of a Policy ¶ 4(b)(iii) attempt to disrupt Complainant’s commercial operations. See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Additionally the Panel notes that hosting of a competing business through the disputed domain names is evidence that the Respondent intended to capitalize on a likelihood of confusion as to Complainant’s association with the disputed domain names vis-à-vis the two trademarks. The Panel thus finds that Respondent’s use of the disputed domain names to promote the competing goods at the expense of unfavorably depicting Complainant’s goods is indicative of Policy ¶ 4(b)(iv) bad faith. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cpf-tools.com> and <clean-power-finance-tools.com> domain names be TRANSFERRED from Respondent to Complainant.
Dr. Katalin Szamosi, Panelist
Dated: November 26, 2014
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