Excelerate Energy Limited Partnership v. Etomby Namme / Pitanga Centre
Claim Number: FA1709001748679
Complainant is Excelerate Energy Limited Partnership (“Complainant”), represented by Penina Michlin Chiu of Frederic Dorwart Lawyers, Oklahoma, USA. Respondent is Etomby Namme / Pitanga Centre (“Respondent”), represented by Ishmael Ebhodaghe of BERNATEVA PARTNERS, Lagos.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <excelerategrp.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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 14, 2017; the Forum received payment on September 14, 2017.
On September 13, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <excelerategrp.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 September 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2017 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 firstname.lastname@example.org. Also on September 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 October 4, 2017.
On October 09, 2017 Complainant filed an additional submission, which was filed in a timely manner according to the Forum’s Supplemental Rule #7.
On October 09, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Reinhard Schanda 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 name be transferred from Respondent to Complainant.
Complainant registered the EXCELERATE ENERGY mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,098,228, registered May 30, 2006). Complainant contends that Respondent’s <excelerategrp.com> is confusingly similar as it removes the “ENERGY” term from Complainant’s mark, adds the generic term “grp,” and adds the generic top-level domain (“gTLD”) “.com.”
Complainant further contends that Respondent has no rights or legitimate interests in <excelerategrp.com>. Respondent is not commonly known by Complainant’s mark, nor has Complainant authorized or given permission to Respondent to use the EXCELERATE ENERGY 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. The disputed domain name instead resolves to a website advertising natural gas goods and services substantially similar to those offered by Complainant.
Finally Complainant contends that Respondent registered and uses the <excelerategrp.com> domain name in bad faith. Respondent knowingly and intentionally trades off on Complainant’s good will in the mark for commercial gain. Respondent had actual and constructive knowledge of Complainant’s rights in the EXCELERATE ENERGY mark prior to registration of the disputed domain name.
Respondent contends that it is commonly known and associated with the disputed domain name in the industry and in the territory within which it operates. Respondent, in registering the disputed domain name, acted for and on behalf of an indigenous Nigerian company known as Excelerate Energy Resources Limited (“EERL”). To that extent, the Respondent is in law an agent of a known or disclosed principal. Respondent also makes a bona fide use of the disputed domain name as it offers goods and services related to the domain name. These wide range of services include delivering a range of clean and efficient Liquefied Petroleum Gas (LPG), including cylinders and accessories to end-users as well as providing natural gas trainings and services to operators, services providers, and other stakeholders in the Nigerian Natural Gas Industry.
C. Additional Submissions
In its Additional Submission Complainant contends that Respondent has not demonstrated any legitimate interest in the disputed domain name, nor has Respondent disputed the domain name’s confusing similarity to Complainant’s longstanding Marks. Complainant has made a prima facie case of: (1) confusing similarity, (2) an absence of Respondent’s legitimate interests in respect of the domain name, and (3) Respondent’s registration and use in bad faith. Respondent has failed to refute Complainant’s prima facie case, and therefore the disputed domain name should be transferred to Complainant.
The Panel finds that:
(1) The domain name <excelerategrp.com> is confusingly similar to Complainants’ registered trademarks.
(2) Respondent has not established rights or legitimate interests in the domain name <excelerategrp.com>.
(3) Respondent has registered and is using the domain name <excelerategrp.com> in bad faith.
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 asserts rights in the EXCELERATE ENERGY mark based upon registration with the USPTO. Registration of a mark with a trademark authority such as the USPTO sufficiently establishes a registrant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Therefore, the Panel finds that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).
In this regard the panel notes that Respondent registered the <excelerategrp.com> domain name on November 17, 2016.
Next, Complainant argues Respondent’s <excelerategrp.com> is confusingly similar as it removes the “ENERGY” term from Complainant’s mark, adds the generic term “grp,” and adds the gTLD “.com.” The removal of a term from a complainant’s mark is insufficient to differentiate a resulting domain name from the mark per Policy ¶ 4(a)(i); likewise, the addition of a generic term and a gTLD do not sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).); see also 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).). As such the Panel finds Respondent’s domain name to be confusingly similar to Complainant’s mark.
Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that Complainant has discharged the onus of proof for the second criterion: Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once Complainant has made a prima facie showing, the burden of production shifts to Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant argues that Respondent has no rights or legitimate interests in the <excelerategrp.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the EXCELERATE ENERGY mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. 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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. As a result, the Panel notes that the WHOIS information of record identifies Respondent as “Etomby Namme / Pitanga Centre.” Additionally, lack of evidence in the record to indicate that a complainant authorized a respondent to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <excelerategrp.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent uses the disputed domain name to offer services in direct competition with Complainant. Using a confusingly similar domain name that resolves in a webpage that directly competes with Complainant fails to provide a bona fide offering of goods or services. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant argues the EXCELERATE ENERGY marks are well known in the business both Complainant and Respondent operate, and, as such, Respondent knowingly appropriated the mark into a confusingly similar domain name to provide similar services to those provided by Complainant. The Panel therefore finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant contends that Respondent registered and uses the <excelerategrp.com> domain name in bad faith by unfairly commercially benefiting from the goodwill associated with Complainant’s trademark. Using a complainant’s mark in a domain name for the purpose of trading upon its reputation and goodwill can evince bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Complainant asserts Respondent appropriates Complainant’s mark to operate in the same industry as Complainant and benefit from the good will associated with Complainant’s mark and business. The Panel finds that Respondent attempted to commercially benefit in bad faith.
Complainant lastly claims that Respondent had actual notice or constructive knowledge of Complainant’s EXCERLERATE ENERGY mark. However, the Panel disregards arguments of bad faith based on constructive knowledge as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does adequately evince 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). Complainant contends that Respondent must have had actual knowledge of the EXCELERATE ENERGY mark based upon Respondent’s use of the mark in the same industry that Complainant operates in. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(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 <excelerategrp.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: October 18, 2017
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