DECISION

 

Energy Transfer LP v. Tim Scott

Claim Number: FA1911001869923

 

PARTIES

Complainant is Energy Transfer LP (“Complainant”), represented by Laura M. Franco of Winston & Strawn LLP, California, USA.  Respondent is Tim Scott (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <energytransferlp.com>, registered with NameCheap, Inc..

 

PANEL

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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 5, 2019; the Forum received payment on November 5, 2019.

 

On November 7, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <energytransferlp.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 November 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 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@energytransferlp.com.  Also on November 7, 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 December 2, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

     Complainant made the following contentions.

Complainant, Energy Transfer LP, is a premier provider of midstream energy services. Complainant claims common law rights in the ENERGY TRANSFER mark. Respondent’s <energytransferlp.com> is confusingly similar to Complainant’s mark as Respondent merely adds the generic term “lp” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.

 

Respondent does not have rights or legitimate interests in the <energytransferlp.com> domain name. Respondent is not permitted or licensed to use Complainant’s ENERGY TRANSFER mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Instead, Respondent fails to make an active use of the disputed domain name.

 

Respondent has registered and uses the <energytransferlp.com> domain name in bad faith. Respondent has engaged in a pattern of bad faith use and registration. In addition, Respondent provides false or misleading WHOIS information. Finally, Respondent had actual knowledge or constructive notice of Complainant’s ENERGY TRANSFER mark prior to registering the <energytransferlp.com> domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant is a United States company that is a premier provider of midstream energy services.

 

2.     Complainant has established its  common law rights in the ENERGY TRANSFER mark.

 

3.    Respondent registered the disputed domain name on May 14, 2019.

 

4.    Respondent has failed to make an active use of the disputed domain name.

 

DISCUSSION

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”).

 

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Since Complainant has not filed a trademark registration for the ENERGY TRANSFER mark, Complainant claims common law rights in the ENERGY TRANSFER mark dating back to at least 1995 for the purposes of Policy ¶ 4(a)(i). Common law rights are typically found through a showing that a secondary meaning in the mark has been created in the minds of the public. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). Complainant claims it has openly and notoriously used the ENERGY TRANSFER mark to promote its products and services throughout the United States. Complainant’s infrastructure includes over 86,000 miles of pipelines carrying approximately 30 percent of the United States’ natural gas and crude oil and crossing 38 states. See Compl. Annex D. Complainant operates projects throughout the United States and has extended its presence beyond the United States, announcing the opening of its first international office—in Beijing, China. Id. Traditionally, a secondary meaning is also established by evidence of a complainant’s sales figures, expenditures, and any other evidence indicating popularity in the mark as related to the complainant. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant points to positive media recognition and claims in the year ending December 31, 2018, Complainant’s revenues totaled more than $54 billion. See Compl. Exs. H&E. As the Panel finds Complainant’s contentions to be sufficient, the Panel concludes that Complainant has established common law rights by showing the ENERGY TRANSFER mark has taken on a secondary meaning in association with Complainant’s business and that such common law rights were established long prior to the date on which the disputed domain name was registered.

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ENERGY TRANSFER mark. Complainant claims that Respondent’s <energytransferlp.com> domain name is confusingly similar to Complainant’s ENERGY TRANSFER mark as Respondent merely adds a modifier and a gTLD to the mark. Additions of a generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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.); see alsoTrip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant argues Respondent merely adds the term “lp”, which stands for ‘limited partnership’ and a “.com” gTLD to Complainant’s ENERGY TRANSFER mark. The Panel agrees with Complainant and finds that the <energytransferlp.com> domain name does not contain changes that would sufficiently distinguish it from the ENERGY TRANSFER mark per Policy ¶ 4(a)(i)

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that 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), then the burden shifts to Respondent to show 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”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

(a) Respondent has chosen to take Complainant’s ENERGY TRANSFER  trademark and to use it in its domain name, adding a modifier that is a generic and/or descriptive term that does not negate the confusing similarity with Complainant’s trademark;

(b) Respondent registered the disputed domain name on May 14, 2019;

(c)  Respondent has failed to make an active use of the disputed domain name;

(d)  Respondent has engaged in these activities without the consent or approval of Complainant;

(e)  Complainant argues that Respondent has no rights or legitimate interests in the  <energytransferlp.com> domain name. Specifically Complainant argues Respondent is not licensed or authorized to use the ENERGY TRANSFER mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the 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 WHOIS information of record identifies Respondent as “Tim Scott,” and there is no other evidence to suggest Respondent was authorized to use the ENERGY TRANSFER mark. See Compl. Annex B. The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);

(f)   Complainant argues that Respondent is not using the <energytransferlp.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make an active use of the disputed domain name. Failure to make active use of a domain name does constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy  ¶¶ 4(c)(i) or (iii). See Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012). In Michelin North, the panel found that inactive use, or “passive holding,” of the disputed domain name by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names.” Here, Complainant provides screenshots of the disputed domain name which resolves to an inactive webpage which currently features an “Error” notice. See Compl. Annex L. The Panel agrees with Complainant that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy  ¶¶ 4(c)(i) or (iii).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent has engaged in a pattern of bad faith registration and use. A respondent’s registration of multiple domain names incorporating famous marks may reflect a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Blue Diamond Growers v. L Wood, FA 1464477 (Forum June 7, 2017) (finding evidence that the respondent had previously registered domain names infringing on famous third-party marks established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Here, Complainant contends that Respondent is a serial cybersquatter and provides a list of 27 domain names that include all or part of large companies’ names and famous trademarks. See Compl. Annex M. Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(ii).

 

Secondly, Complainant argues that Respondent provides false WHOIS information. Providing false or misleading WHOIS information may constitute bad faith per Policy ¶ 4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”). Here, Complainant contends that Respondent is using a bank’s mailing address, and potentially someone else’s phone number in order to evade being located and punished for its fraudulent activity. Complainant provides the locations of Respondent’s falsely listed WHOIS information. See Compl. Exs. Q&R. Therefore, the Panel finds that Respondent registered and uses the <energytransferlp.com> domain name in bad faith per Policy ¶ 4(a)(iii).

 

Thirdly, Complainant argues that Respondent registered the <energytransferlp.com> domain name with actual knowledge of Complainant’s rights in the ENERGY TRANSFER mark. Registering a domain name with knowledge of another’s rights therein may be indicative of bad faith under Policy ¶4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Here, Complainant argues that Respondent’s knowledge of Complainant’s mark prior to registering <energytransferlp.com> is apparent from Complainant’s extensive use of the ENERGY TRANSFER trademark since 1995 and from Respondent’s domain name being identical to Complainant’s corporate name. Therefore, the Panel finds that Respondent registered the <energytransferlp.com> domain name with actual knowledge of Complainant’s ENERGY TRANSFER mark, thus demonstrating bad faith per Policy ¶4(a)(iii).

 

Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ENERGY TRANSFER mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <energytransferlp.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  December 3, 2019

 

 

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