Alliant Energy Corporation v. billy wood
Claim Number: FA2108001959495
Complainant is Alliant Energy Corporation ("Complainant"), represented by Thomas L. Holt of Perkins Coie LLP, Illinois, USA. Respondent is billy wood ("Respondent"), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wisconsinpowerandlightco.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 13, 2021; the Forum received payment on August 13, 2021.
On August 16, 2021, GoDaddy.com, LLC confirmed by email to the Forum that the <wisconsinpowerandlightco.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 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on August 17, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 name be transferred from Respondent to Complainant.
Complainant was founded in 1917 as Wisconsin Power and Light Company, and now does business as Alliant Energy Corporation. Complainant generates, transmits, and distributes electricity, and also transports natural gas. Complainant serves approximately 950,000 electric and 410,000 natural gas customers throughout Iowa and Wisconsin.
Complainant states that Wisconsin Power and Light Company is a subsidiary of Complainant, and that Complainant "has expended significant sums of money and substantial effort" promoting and advertising its goods and services under the WISCONSIN POWER AND LIGHT COMPANY mark. Complainant asserts that "to this day" members of the public throughout Wisconsin and Iowa "continue to associate" WISCONSIN POWER AND LIGHT COMPANY with Complainant and its goods and services. Complainant states that it also owns the domain name <wpl.com>, which corresponds to an acronym for WISCONSIN POWER AND LIGHT.
The disputed domain name <wisconsinpowerandlightco.com> was registered via a privacy registration service in April 2020, and Respondent was revealed as the registrant when the registrar lifted the privacy shield in connection with this proceeding. Complainant alleges that Respondent has used the disputed domain name to impersonate a member of Complainant's staff, placing a fraudulent order valued at roughly $240,000 from a third-party vendor, and possibly engaging in similar conduct with other vendors. The disputed domain name is also being used for a "Wisconsin Power & Light Company" website, presumably in support of Respondent's fraudulent scheme. Complainant states that it has not authorized, licensed, or otherwise permitted Respondent to use its mark.
Complainant contends on the above grounds that the disputed domain name <wisconsinpowerandlightco.com> is confusingly similar to its WISCONSIN POWER AND LIGHT COMPANY mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has not proved that it has rights in a relevant trademark.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Complainant asserts that the disputed domain name <wisconsinpowerandlightco.com> is confusingly similar to its WISCONSIN POWER AND LIGHT COMPANY mark. Complainant does not appear to own a trademark registration for WISCONSIN POWER AND LIGHT COMPANY or anything similar thereto, and thus must be relying on common law trademark rights (although Complainant does not state this expressly).
A complainant relying on rights arising solely at common law has a fairly steep evidentiary burden under the Policy.
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
. . . .
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.3.
Use merely as a trade name is insufficient under the Policy, absent evidence that the name also functions as a trademark. See, e.g., Navigo Energy Inc. v. Andreas Meier & toptarget.com BV, FA 206312 (Forum Dec. 6, 2003) (finding prior but recent use of fanciful putative mark as corporate name insufficient, absent evidence that it functioned as a trademark or service mark and thereby acquired secondary meaning); Netro Corp. v. James Koustas, FA 109723 (Forum June 12, 2002) (finding conclusory affidavits and registration of company name with state authority insufficient to show common law trademark rights).
Based on the manner in which Complainant describes the use and claimed public recognition of its putative WISCONSIN POWER AND LIGHT COMPANY mark, it appears that Complainant no longer uses that mark in a trademark or even a trade name sense, having shifted at some point to ALLIANT ENERGY. Complainant does not state when it made this shift, although the Panel reads the Complaint and the supporting declaration of Complainant's marketing manager as implying that the shift occurred long ago. A cursory trademark search indicates that Complainant began using the ALLIANT ENERGY mark in October 1998, suggesting that Complainant likely ceased using WISCONSIN POWER AND LIGHT COMPANY as a trademark or trade name more than twenty years ago.
The Complaint and accompanying declaration offer little more than vague, conclusory assertions regarding public recognition and former use of the putative mark. The declaration refers to an exhibit that was omitted (presumably unintentionally) from the submission, described as a Wisconsin corporate status record confirming that Complainant has a subsidiary called Wisconsin Power and Light Company. Even assuming that Complainant continues to use this name for a subsidiary, however, there is far from sufficient evidence to support a claim of common law trademark rights for purposes of the Policy.
The Panel notes that Complainant's claimed ownership of a domain name corresponding to an acronym for the putative mark, <wpl.com>, does not confer any common law trademark rights, any more than Respondent's registration of the disputed domain name <wisconsinpowerandlightco.com> confers corresponding trademark rights upon Respondent. The domain name <wpl.com> is actually registered in the name of a privacy registration service, though the Panel accepts Complainant's representation that it is the beneficial owner. It is noteworthy, however, that <wpl.com> redirects to the website of a domain name brokerage service rather than to a website associated with Complainant. And Complainant does not appear to make active use of any other domain name corresponding to its putative WISCONSIN POWER AND LIGHT COMPANY mark, further substantiating the Panel's inference that Complainant has ceased using WISCONSIN POWER AND LIGHT COMPANY except as the formal name of a subsidiary.
The Panel therefore finds that Complainant has not proved that it has the rights in a relevant mark that are required by paragraph 4(a)(i) of the Policy. The Panel reaches this conclusion reluctantly, as it appears fairly clear that Respondent lacks rights or legitimate interests in the disputed domain name and that Respondent registered and is using the domain name in bad faith, as another Panel found in a prior case involving the same parties and very similar facts. See Alliant Energy Corp. v. billy wood, FA 1832130 (Forum Mar. 27, 2019) (ordering transfer of <alliantenergycorpservices.com>). The Panel is also mindful of two other similar cases involving Complainant and what may well be an alias for the same Respondent, Alliant Energy Corp. v. joey schumer / alliant energy, FA 1833248 (Forum Apr. 3, 2019) (ordering transfer of <alliantenergycorpservices.us>), and Alliant Energy Corp. v. joey schumer, FA 1815590 (Forum Dec. 4, 2018) (ordering transfer of <alliantenergycorporateservices.com>). In this case, however, Complainant will need to look elsewhere for a remedy.
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <wisconsinpowerandlightco.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: September 13, 2021
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