Energizer Brands, LLC v. Janette Rawls
Claim Number: FA1906001847665
Complainant is Energizer Brands, LLC (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Janette Rawls (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <energizerholdingsstaffing.com>, and <energizerholdingsusa.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 13, 2019; the Forum received payment on June 13, 2019.
On June 14, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <energizerholdingsstaffing.com> and <energizerholdingsusa.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 June 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2019 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@energizerholdingsstaffing.com. Also on June 19, 2019, 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 July 11,2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is one of the world largest manufacturers of primary batteries, portable flashlights, and lanterns.
Complainant has rights in the ENERGIZER mark through its registration with the numerous trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”).
Respondent’s <energizerholdingsstaffing.com> and <energizerholdingsusa.com> domain names are identical or confusingly similar to Complainant’s ENERGIZER mark as the domain names wholly incorporate Complainant’s ENERGIZER mark and adds the generic term “holdings,” and the generic term “staffing” or the geographical term “usa.” Respondent also includes the “.com” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by either domain name and Respondent is not authorized to use Complainant’s mark. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is planning on using email addresses associated with the <energizerholdingsstaffing.com> and <energizerholdingsusa.com> domain names to pose as Complainant and perpetrate a fraudulent phishing scheme and has used the domain names to take cognizable steps towards that end. Browsing to Respondent’s domain names result in a “404” error that the domain names cannot be found.
Respondent registered and is using the at-issue domain names in bad faith with the intent to cause confusion to deceive internet users into thinking they are dealing with Complainant when they are not. Lastly, Respondent had actual knowledge of Complainant’s rights in the ENERGIZER mark given the longstanding use of its famous and well-known mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ENERGIZER mark through its registration of such mark with the USPTO as well though additional registrations of such trademark worldwide.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the ENERGIZER trademark.
Respondent intends to use emails hosted by the <energizerholdingsstaffing.com> and <energizerholdingsusa.com> domain names to pose as Complainant and perpetrate a phishing scheme upon Complainant and third parties.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its ENERGIZER trademark. Such registration is sufficient to demonstrate Complainant’s rights in the ENERGIZER mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <energizerholdingsstaffing.com> and <energizerholdingsusa.com> domain names each contain Complainant’s ENERGIZER trademark followed by the generic term “holdings” and either the generic term “staffing” or “usa”. The domain names each conclude with the top-level domain name “.com”. The differences between Respondent’s domain names and Complainant’s trademark are insufficient to distinguish either domain name from the Complainant’s ENERGIZER mark for the purposes of Policy ¶ 4(a)(i). In fact, the included generic terms suggest Complainant’s business related activities and geographic area of operation. Their inclusion in Respondent’s domain names only add to any confusion between the domain names and Complainant’s trademark. Therefore, the Panel concludes that Respondent’s <energizerholdingsstaffing.com> and <energizerholdingsusa.com> domain names are each confusingly similar to Complainant’s trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Here, Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Janet Rawls” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by either the <energizerholdingsstaffing.com> or the <energizerholdingsusa.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <energizerholdingsstaffing.com> or the <energizerholdingsusa.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Respondent’s <energizerholdingsstaffing.com> and <energizerholdingsusa.com> domain names fail to address an active website. Respondent’s holding of the of the domain names without connecting either to a website is neither a bona fide offering of goods or services under Policy ¶ 4 (c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Furthermore, Respondent uses the domain names in connection with an intended email based fishing scheme. Using the domain names for such purpose also fails to support Respondent having rights or interests in either at-issue domain name pursuant to the Policy. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”).
Given the forgoing and absent any contrary evidence from Respondent, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶ 4(a)(ii).
The at-issue domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Complainant shows that Respondent likely plans on using email addresses associated with the <energizerholdingsstaffing.com> and <energizerholdingsusa.com> domain names to pose as Complainant. Moreover, Respondent intends on using its fraudulent email to perpetrate a phishing scheme on third parties. Complainant shows that Respondent has taken cognizable steps towards that end. Using email pretending to be from a trademark holder to con third parties out of their funds and/or private data is a well-known and common grift. Respondent’s use of the at-issue domain names in this manner shows that it registered and is using the domain names in bad faith under Policy ¶ 4(b)(iv). See O’Neill Beverages Co. LLC v. James Alen, FA1841058 (Forum May 31, 2019) (“Respondent apparently attempts to confuse, for commercial gain, Respondent’s email recipients into believing its communications were from Complainant, implying a connection that does not exist. Using a confusingly similar domain name to trade upon the goodwill of a complainant’s mark for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv).”).
Additionally, browsing to Respondent’s domain names result in “404” errors indicating that no website is addressed by either domain name. It follows that Respondent’s <energizerholdingsstaffing.com> and <energizerholdingsusa.com> domain names are held inactively. Respondent’s failure to actively use either <energizerholdingsstaffing.com> or <energizerholdingsusa.com> to host a website further indicates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Finally, Respondent had actual knowledge of Complainant’s rights in the ENERGIZER mark when it registered <energizerholdingsstaffing.com> and <energizerholdingsusa.com> as domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s provisioning the domain names to permit email service therefrom. Respondent’s registering the domain names without having rights or interests in such domain names, all the while having knowledge of Complainant’s rights therein, shows Respondent’s bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <energizerholdingsstaffing.com> and <energizerholdingsusa.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 11, 2019
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