Dominion Energy, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2205001995322
Complainant is Dominion Energy, Inc. (“Complainant”), represented by Claire Hagan Eller of McGuireWoods LLP, Virginia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dominionenergyc.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2022; the Forum received payment on May 6, 2022.
On May 9, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dominionenergyc.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 May 12, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2022, 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@dominionenergyc.com. Also on May 12, 2022, 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 June 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it is a Fortune 500 company that generates, transmits, and distributes energy products at retail and wholesale. Established in 1909, it now employs over 17,000 people across 13 states, serving nearly seven million customers in the United States.
Complainant submits that it has owned and used, and continues to use, its DOMINION ENERGY mark and other marks incorporating the DOMINION ENERGY mark in connection with its operations since at least 2017.
Complainant alleges that the disputed domain name <dominionenergyc.com> is highly similar in sight, sounds, and connotation to the DOMINION ENERGY mark as it completely subsumes the registered trademark DOMINION ENERGY alone makes the disputed domain confusingly similar. See Navistar Int’l Corp. v. Eiji Takahashi, FA1672359 (Forum May 27, 2016) (finding <navistar.xyz> confusingly similar to the NAVISTAR mark).
Complainant submits that the inclusion of the letter “c” in the disputed domain name does not mitigate against the confusion caused. This single letter appears to be a purposeful misspelling, particularly given that the letter “c” is the first letter in the <.com> extension that follows on.
Further, Complainant argues that the disputed domain name uses the very same top-level domain <.com> extension as in Complainant’s own domain names used for its legitimate websites, such as <dominionenergy.com> and <careers.dominionenergy.com>. See Slep-Tone Ent. Corp. d/b/a Sound Choice Accompaniment Tracks v. Sound Choice Disc Jockeys, Inc., FA2002000093636 (Forum Mar. 13, 2000) (finding that because “the second level domains are virtually identical and both domain names contain the same top level domain, Internet users may be attracted to Respondent’s website, believing it to be the website of Slep_Tone,” resulting in confusion).
Complainant next submits that Respondent has no rights or legitimate interests in the disputed domain name alleging that upon information and belief, Respondent is not commonly known by DOMINION ENERGY. See Gallup Inc. v. Amish Country Store, FA 96209 (Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Complainant adds that on information and belief, Complainant has never granted Respondent any license or other rights to use DOMINION ENERGY mark or any of Complainant’s marks that incorporate DOMINION ENERGY in commerce for any purpose. See Foot Locker, Inc. v. Blezin Widmaer, No. FA0205000113283 (Forum June 17, 2002) (finding registrant had no rights or legitimate interests in domain where “Respondent is not a licensee or authorized agent of Complainant.”).
Referring to a screen captures of the websites to which the disputed domain name resolved, which have been adduced in evidence in an annex to the Complaint, Complainant submits that the screen captures shows that the disputed domain name is currently being used as a parked page and/or redirecting to different websites that appear to belong to legitimate but unrelated entities.
The disputed domain name continually redirecting to different websites which suggests that the Respondent is using the disputed domain name for an unlawful purpose such as phishing for personal information. Complainant submits that this is further evidenced because Complainant has contacted one of the companies (Michael Kors) to whose website the disputed domain name has recently resolved, and was informed that there is no affiliation between the disputed domain name and that organization.
Reasserting that it has no affiliation with Respondent, or its alleged business operating at the disputed domain name, and has never authorized Respondent to use the DOMINION ENERGY mark or any other of Complainant’s trademarks, Complainant argues that Respondent is therefore not only violating the Policy, but is also committing wilful trademark infringement, unfair competition, and false designation of origin, which precludes Respondent from claiming legitimate rights or bona fide fair use. See Twitter, Inc. v. liu wan jie, FA FA1921103 (Forum Dec. 17, 2020) (finding that the respondent had no rights or legitimate interests when “[t]he web site attached to the Domain Name mimics the Complainant’s web site and uses the Complainant’s marks and the Complainant’s logo . . .”).
Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing that it has continuously used the DOMINION ENERGY mark for nearly 5 years.
Complainant states that performing searches across a number of internet search engines for “Dominion Energy” return multiple results referencing Complainant and its goods and services and argues that in the light of Complainant’s extensive use of the DOMINION ENERGY mark, there can be little doubt that Respondent registered the disputed domain name with Complainant and its marks squarely in mind. See Caesar World, Inc. v. Forum LLC, D2005-0517 (WIPO Aug. 1, 2005) (“given Complainant’s worldwide reputation and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name”).
Complainant submits that the misspelling in the disputed domain name is deliberate, particularly given that the term “Dominion Energy” has no meaning other than as a reference to Complainant and contends that there can be no dispute that the registrant of the disputed domain name intended the disputed domain name to trick would-be job applicants into believing the disputed domain name is owned by or associated with Complainant. See, e.g., Tetra Laval Holdings & Finance S.A. v. Wolfe, No. D2017-0831 (WIPO 2017) (“The misspelling in this case is also hardly noticeable and results in a very minor modification of the Complainant’s mark. If not quite identical, this domain name is about as close to being so as it is possible to be. The modified spelling in each case does not result in a different or existing word with any different meaning of its own.”).
Complainant further alleges that Respondent is using the disputed domain name to divert internet users to Respondent’s own website in an effort to deceive the public.
Complainant adds that upon information and belief, Respondent also uses the disputed domain name to dupe users to enter personally identifiable information as part of an illegitimate and deceptive scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
· United States registered trademark DOMINION ENERGY, registration number 2,096,938, registered on September 16, 1997.
Complainant has an established Internet presence and is the owner of a portfolio of domain name registrations including the following that incorporate the DOMINION ENERGY mark: domain names that incorporate the DOMINION ENERGY Family of Marks, including, for example: <dominionenergy.com>, <careers.dominionenergy.com>, and <investors.dominionenergy.com>.
The disputed domain name <dominionenergyc.com> was registered on May 26, 2021.
In the absence of a Response there is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs for the disputed domain name, and the Registrar’s response to the Forum’s request for verification of the registration details of the disputed domain name, confirming that Respondent is the registrant.
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”).
Complainant has provided convincing and uncontested evidence that it has rights in the DOMINION ENERGY mark, established by its ownership of its portfolio of trademark and service mark registrations described above.
The disputed domain name <dominionenergyc.com>, consists of Complainant’s mark in its entirety, in combination with the letter “c” and the generic Top Level Domain (“gTLD”) extension <.com>.
Complainant’s DOMINION ENERGY mark is the dominant and only distinctive element in the disputed domain name.
The letter “c” in the disputed domain name is meaningless and has no distinguishing character, nor does the gTLD extension <.com> prevent a finding of confusing similarity in the context of this Complaint as it would be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name <dominionenergyc.com> is confusingly similar to the DOMINION ENERGY mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· on information and belief, Respondent is not commonly known by DOMINION ENERGY;
· on information and belief, Complainant has never granted Respondent any license or other rights to use DOMINION ENERGY mark or any of Complainant’s marks that incorporate DOMINION in commerce for any purpose;
· the screen captures of the websites to which the disputed domain name resolves, which have been adduced in evidence in an annex to the Complaint shows that the disputed domain name is continually redirecting to different websites: currently being used as a parked page and/or redirecting to different websites that appear to belong to legitimate but unrelated entities;
· the disputed domain name is continually redirecting to different websites which suggests that the Respondent is using the disputed domain name for an unlawful purpose such as phishing for personal information;
· Complainant has contacted one of the companies (Michael Kors) to whose website the disputed domain name has recently resolved, and was informed that there is no affiliation between the disputed domain name and that organization;
· Respondent is therefore not only violating the Policy, but is also committing willful trademark infringement, unfair competition, and false designation of origin, which precludes Respondent from claiming legitimate rights or bona fide fair use.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant’s DOMINION ENERGY mark is the initial, dominant and only distinguishing element in the disputed domain name. DOMINION ENERGY is a distinctive and unlikely combination of two words. It is improbable therefore that the registrant chose these two words in the same sequence as Complainant’s mark for any reason other than to make reference to Complainant.
This Panel accepts Complainant’s submission therefore that the disputed domain name was chosen and registered in bad faith with actual knowledge of Complainant with the intention of targeting and taking predatory advantage of Complainant’s mark and goodwill in the DOMINION ENERGY mark.
The uncontested evidence shows that the disputed domain name does not consistently resolve to any one website, but instead redirects to different websites.
Complainant is to be commended for taking the step to enquire of the third party to whose website the disputed domain name has on occasion resolved to enquire if there is any relationship between Respondent and the third party. The third party’s confirmation that it has no relationship with Respondent has greatly strengthened its case and this Panel accepts Complainant’s submission that the disputed domain name was registered and is being used in bad faith.
This Panel finds that Respondent is using the disputed domain name in bad faith to create initial interest confusion among members of the public and thereby intercept Internet traffic intended for Complainant.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in 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 <dominionenergyc.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 13, 2022
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