Direct Energy Marketing Limited v. quanzhongjun
Claim Number: FA1809001806271
Complainant is Direct Energy Marketing Limited (“Complainant”), represented by Sean Collin of IPWatch Corporation, Alabama, USA. Respondent is quanzhongjun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ddirectenergy.com>, <directenergyy.com>, and <directtenergy.com> (“Domain Names”), registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 17, 2018; the Forum received payment on September 17, 2018.
On September 18, 2018, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <ddirectenergy.com>, <directenergyy.com>, and <directtenergy.com> Domain Names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@ddirectenergy.com, postmaster@directenergyy.com, postmaster@directtenergy.com. Also on September 21, 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 October 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 Names be transferred from Respondent to Complainant.
A. Complainant
Complainant owns and uses the DIRECT ENERGY mark in connection to the goods and services it provides for its consumers. Complainant has rights in the DIRECT ENERGY mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,658,962, registered Dec. 10, 2002). Respondent’s <ddirectenergy.com>, <directenergyy.com>, and <directtenergy.com> Domain Names are identical or confusingly similar to Complainant’s DIRECT ENERGY mark as they are likely to cause confusion among consumers.
Respondent has no rights or legitimate interests in the <ddirectenergy.com>, <directenergyy.com>, and <directtenergy.com> Domain Names. Respondent is not commonly known by the Domain Names nor authorized to use Complainant’s mark. Additionally, Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent has never used the disputed domain names in connection to a functional website.
Respondent registered and uses the <ddirectenergy.com>, <directenergyy.com>, and <directtenergy.com> Domain Names in bad faith. Respondent failed to actively use the disputed domain names since registering them. Further, Respondent deliberately misspelled Complainant’s mark when it registered the Domain Names. Finally, Respondent had actual knowledge of Complainant’s rights in the DIRECT ENERGY mark prior to registering the Domain Names, given Complainant’s use of the DIRECT ENERGY mark for over 20 years and the distinctiveness and fame of the DIRECT ENERGY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the DIRECT ENERGY mark. Each of the Domain Names is confusingly similar to Complainant’s DIRECT ENERGY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Names and that Respondent registered and uses each of the Domain Names 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).
The Language of the Registration Agreement in this case is Chinese. The Complainant, pursuant to UDRP Rule 11(a) has requested that the language of the Proceeding be English.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by Complainant. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) and Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”)
In the present case, the Panel decides that the language of the proceeding should be English. Each of the websites to which the Domain Names resolve to (“Respondent’s Websites”) is in the English language and the Domain Names themselves clearly refer and reflect words in the English language. As such, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence exists to suggest the likely possibility that the Respondent is conversant and proficient in the English language.
Complainant has rights in the DIRECT ENERGY mark based upon its registration with the USPTO. Registration with USPTO is sufficient to establish rights in a mark pursuant to 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)).
The Panel finds that each of the <ddirectenergy.com>, <directenergyy.com>, and <directtenergy.com> Domain Names are confusingly similar to the DIRECT ENERGY mark. Each of the Domain Names fully incorporates the DIRECT ENERGY Mark adding only a single letter (“d”, “y” or “t”) and the gTLD “.com.” Misspelling a complainant’s mark, either by adding or removing letters, and adding a gTLD are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding the <twitcch.tv> domain name confusingly similar to the TWITCH TV trademark because the domain name consisted of a common misspelling of the mark by merely adding the letter “c”); see also 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the DIRECT ENERGY mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a 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 WHOIS lists “quanzhongjun” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
Each of the Domain Names resolves to a website offering advertisements for online payment processing and credit card software on a pay-per-click basis. Two of the Respondent’s Websites prominently display the DIRECT ENERGY Mark. In circumstance where the links have no connection to any descriptive meaning inherent in the Domain Names, the use of a domain name to offer pay-per-click advertisements does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time of registration of the Domain Names, September 4, 2018, Respondent had actual knowledge of Complainant’s DIRECT ENERGY mark since two of the Respondent’s Websites prominently display Complainant’s DIRECT ENERGY mark. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a series of domain names that are direct variants of the words “direct energy” and re-direct them to pay-per-click sites other than to take advantage of Complainant’s reputation in the DIRECT ENERGY Mark, a reputation developed over 20 years of use. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s DIRECT ENERGY Mark for commercial gain by using the confusingly similar Domain Names to resolve to websites featuring pay-per-click links. Using a confusingly similar domain name to disrupt a complainant’s business and commercially benefit via competing, pay-per-click links constitutes bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA 1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA 1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”). Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). Furthermore, past UDRP panels have found that typosquatting itself can be evidence of relevant bad faith registration and use. See Diners Club int'l Ltd. v. Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (“registering a domain name which entirely incorporates a famous mark with additional letter (s) in the hope that Internet users will mistype Complainant’s mark and be taken to Respondent’s site is registration and use in bad faith”).
The Panel finds Complainant has satisfied 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 <ddirectenergy.com>, <directenergyy.com>, and <directtenergy.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: October 22, 2018
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