Direct Energy Marketing Limited; Direct Energy Marketing Inc.; Direct Energy Business, LLC; Direct Energy, LP v. jessica Robichaud
Claim Number: FA1808001801131
Complainant is Direct Energy Marketing Limited; Direct Energy Marketing Inc.; Direct Energy Business, LLC; Direct Energy, LP (“Complainant”), represented by Meredith Phillips of IPWatch Corporation, Alabama, USA. Respondent is jessica Robichaud (“Respondent”), Vermont, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <directenergyaudits.com>, registered with GoDaddy.com, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 13, 2018; the Forum received payment on August 13, 2018.
On August 14, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <directenergyaudits.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 August 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 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@directenergyaudits.com. Also on August 16, 2018, 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 September 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
On September 11, 2018 the Panel issued an Order seeking further information and documentation from the Complainant and on September 18, 2018 Complainant’s Representative filed a Submission Of Additional Information (“Additional Submission”) in response to such Order.
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
Since 2002 the Complainants have provided energy-related services that include the procurement and provision of electricity and natural gas, the maintenance and repair of certain home appliances and systems such as heating and cooling, architectural and engineering services relating to energy usage and conservation, newsletters in the field of energy management, and energy assessment services focused on improving energy efficiency. Their services are provided to millions of customers throughout much of the United States of America and Canada resulting in the sale of billions of dollars worth of products and services. Complainants have rights in the DIRECT ENERGY trademark based upon their ownership of multiple registrations of the mark and other marks which include this phrase such as DIRECT ENERGY HOME, DIRECT ENERGY HQ, and DIRECT ENERGY SOLAR. These registrations have all been filed with the United States Patent and Trademark Office ("USPTO”). Complainants also own numerous domain names that incorporate their marks such as <directenergy.com>, <directenergy.co>, <directenergysaving.win>, and <directenergysolarvermont.com>. Respondents’ <directenergyaudits.com> domain name is confusingly similar to Complainants’ marks because Respondent incorporates the DIRECT ENERGY mark in its entirety in the domain name and merely appends the term “audits” and the “.com” gTLD.
Respondent lacks rights and legitimate interests in the <directenergyaudits.com> domain name because Respondent is not commonly known by the disputed domain name, even though it registered the business name “Direct Energy Audits of Vermont, LLC” with the Vermont Secretary of State after it created the disputed domain name. Further, Respondent is not authorized or permitted to use Complainants’ marks in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert users to its website and its competing energy related services.
Respondent registered and uses the <directenergyaudits.com> domain name in bad faith. Respondent attempts to disrupt Complainants’ business and attract, for commercial gain, users to the disputed domain name’s website and to its competing energy related services. Additionally, Respondent has failed to cooperate with Complainants’ formal requests to cease using Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainants have rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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.
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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are four named Complainants. The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
See also Montres Breguet SA, Tissot SA, Blancpain SA v. Fancy Bandwith, Fancy Bandwith Inc., D2016-1198 (WIPO August 19, 2016) (acknowledging that “the Swatch Group AG is the parent company of the Complainants Montres Breguet SA, Tissot SA, and Blancpain SA.” * * * “The Panel is of the view that the Complainants have a specific common grievance against the Respondent. In addition the Respondent has engaged in a common action that has affected the Complainants’ individual rights in a similar fashion”); Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (the Panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (Panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).
In the present case, the four named Complainants are: Direct Energy Marketing Limited; Direct Energy Marketing Inc.; Direct Energy Business, LLC; and Direct Energy, LP. The Complaint lists a number of trademark registrations and each of the named Complainants is the owner of at least one of these registrations as shown on the registration certificates submitted into evidence. Further, it is apparent that each of the Complainants bears a name that incorporates the phrase “Direct Energy” and the Additional Submission includes evidence that all of the named Complainants are members of a group of companies. The Panel further notes that the file of USPTO Trademark Registration No. 5216062, which is cited in this case, includes a document entitled “Trademark Consent and Coexistence Agreement” to which each of the current Complainants in the present UDRP case is a party. This agreement states that all of these entities “are all part of the same corporate group…” and it is signed by officers of each entity.
In light of this evidence, the Panel accepts that there exists a sufficient basis upon which to establish a nexus or link between the Complainants for purposes of proceeding with this UDRP case.
Complainants have rights in the DIRECT ENERGY trademark based upon their registration of the mark with the USPTO. Registration with the USPTO is sufficient to establish a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Here, Complainants provide copies of its registered trademark certificates with the USPTO. Therefore, the Panel finds that the Complainants have rights in the DIRECT ENERGY mark under Policy ¶ 4(a)(i).
Next, Complainants argue that Respondent’s <directenergyaudits.com> domain name is confusingly similar to Complainants’ DIRECT ENERGY mark because Respondent incorporates the mark in its entirety in the domain name and adds the descriptive term, “audits.” The addition of a descriptive term may not be sufficient to distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See United Services Automobile Associaition v. Gabriel Joseph, FA 1781133 (Forum April 17, 2018) (finding the <usaatrustfund.com> domain name confusingly similar to the USAA mark and holding “the inclusion of the term “trustfund” in the domain name is somewhat suggestive of Respondent’s finance related business). Furthermore, confusion may be enhanced where the added descriptive term relates to the complainant’s line of business. See Dell Inc. v. Asri Fahmi / drivers.inc, Claim No. FA 1799045 (Forum August 11, 2018) (because the term “drivers” is directly relevant to the Complainant’s computer business “the addition of the word ‘drivers’ in the disputed domain name adds to the confusion with Complainant’s trade mark.”) Here, Respondent incorporates Complainants’ mark in its entirety in the disputed domain name, and adds the descriptive term “audits,” which Complainant notes relates to an assessment service that it provides as part of the energy efficiency segment of its business.
Finally, although Complainants do not specifically argue this, the Panel also notes that addition of the “.com” gTLD to the disputed domain name is irrelevant under a Policy ¶ 4(a)(i) analysis as it adds no substantive meaning to the name. See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (finding that the addition of a generic term and the generic top-level domain “.com” insufficient to differentiate the <nanodark.com> domain name from the NANO mark).
Upon a review of this matter the Panel concludes that Respondent’s <directenergyaudits.com> domain name is confusingly similar to Complainants’ DIRECT ENERGY mark under Policy ¶ 4(a)(i).
The Panel notes that Complainants must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should they succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainants argue that Respondent lacks rights and legitimate interests in the <directenergyaudits.com> domain name. Specifically, Complainants claim Respondent is not commonly known by the domain name or the DIRECT ENERGY mark. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). 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)). Additionally, in the absence of a legitimate noncommercial or fair use, lack of authorization from complainant to use its mark may be further evidence that a respondent does not have rights or legitimate interests in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes that the WHOIS record identifies the Respondent here as “jessica Robichaud”.
Complainants also note that Respondent has registered a business entity named “Direct Energy Audits of Vermont, LLC”. As Respondent has not entered any evidence, correspondence, statement, or any form of submission in this case, the Panel is unable to conclude that the mere existence of a business registration indicates that Respondent is actually and commonly known by the name Direct Energy Audits of Vermont, LLC. Further, it is noted that Respondent registered this business entity after its registration of the <directenergyaudits.com> domain name. Timing is relevant to determining whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”) (emphasis added). Complainants provide evidence of Respondent’s registration of the business name “Direct Energy Audits of Vermont, LLC” with the Vermont Secretary of State nearly one month after Respondent registered the disputed domain name. Therefore, the Panel concludes that Respondent was not commonly known by the disputed domain name prior to registration, thereby showing a lack of rights and legitimate interests under Policy ¶ 4(c)(ii). Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the <directenergyaudits.com> domain name under Policy ¶ 4(c)(ii).
Complainants further allege that Respondent fails to use the <directenergyaudits.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainants assert that Respondent used the disputed domain name to divert internet users to Respondent’s webpage to offer services that compete directly with Complainants. Use of a domain name to divert internet traffic to a webpage that competes directly with a complainant may not be considered a bona fide use under Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainants claim that Respondent used the domain name’s resolving webpage to promote an energy auditing service that competes with Complainants’ energy assessment and efficiency services. Although the <directenergyaudits.com> domain name currently does not resolve to any website content, Complainants submit into evidence screenshots of the domain name’s prior resolution, while owned by the Respondent, gathered from the website www.Archive.org. This website invites visitors to “schedule an accurate energy audit” and contains an “FAQ” section in which it is explained that “The audit can access how much energy your home consumes and suggest ways to make it more efficient.” In view of this evidence and Respondent’s lack of any submission in this case, the Panel concludes that Respondent does, in fact, compete with Complainants’ services and thus fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use Policy ¶¶ 4(c)(i) or (iii).
For the foregoing reasons, the Panel concludes that Respondent does not have rights or legitimate interests in the <directenergyaudits.com> domain name under Policy ¶ 4(a)(ii).
Complainants assert that Respondent registered and uses the <directenergyaudits.com> domain name in bad faith. As Complainants submit evidence that they are one of the largest energy providers in the United States and specifically that they operate in Respondent’s home state of Vermont, it is more likely than not that Respondent was on actual notice of the DIRECT ENERGY mark. This conclusion is further supported by the assumption that Respondent should have known of Complainants where its prior website stated “I have been in the energy auditing field for four years and building sciences for twelve.”
Next, Complainants allege that Respondent used the domain name to disrupt Complainants’ business and attract users for commercial gain. Use of a disputed domain name to disrupt a complainant’s business and attract users for commercial gain may evince bad faith under Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (finding that the respondent’s use of the disputed domain name to offer competing loan services disrupts the complainant’s business under Policy ¶ 4(b)(iii)); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Complainants claim that Respondent used the disputed domain name’s resolving webpage to promote an energy auditing service that competes directly with Complainants’ energy assessment and efficiency services. Complainants further allege that Respondent uses the confusing similarity between the <directenergyaudits.com> domain name and Complainants’ DIRECT ENERGY mark to capitalize on the goodwill associated with Complainants’ mark. In the absence of any response or other submission from Respondent, these allegations go uncontested. As such, this Panel concludes that Respondent registered and used the <directenergyaudits.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Based upon the arguments and evidence submitted and given the lack of any response, evidence, or other submission by Respondent, the Panel finds that the <directenergyaudits.com> domain name was registered and is being used in 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 <directenergyaudits.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 19, 2018
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