Dominion Energy, Inc. v. Zhi Chao Yang
Claim Number: FA2304002042086
Complainant is Dominion Energy, Inc. (“Complainant”), represented by Mary Dalton Baril of McGuireWoods LLP, Virginia, USA. Respondent is Zhi Chao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bdominionenergy.com>, <cdominionenergy.com>, <dominionanergy.com>, <dominiondenergy.com>, <dominiondnergy.com>, <dominioneanergy.com>, <dominionebnergy.com>, <dominionednergy.com>, <dominioneenrgy.com>, <dominionehnergy.com>, <dominionenerga.com>, <dominionenergby.com>, <dominionenerge.com>, <dominionenerghy.com>, <dominionenergj.com>, <dominionenergsy.com>, <dominionenerguy.com>, <dominionenergvy.com>, <dominionenergyg.com>, <dominionenergyh.com>, <dominionenergyo.com>, <dominionenergyr.com>, <dominionenergyt.com>, <dominionewnergy.com>, <dominionexnergy.com>, <dominionfnergy.com>, <dominionhenergy.com>, <dominionienergy.com>, <dominionjenergy.com>, <dominiononergy.com>, <dominionsnergy.com>, <fdominionenergy.com>, <hdominionenergy.com>, <sdominionenergy.com>, and <vdominionenergy.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd.; Cloud Yuqu 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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on April 27, 2023; Forum received payment on April 27, 2023.
On April 27, 2023; April 28, 2023; May 1, 2023; May 4, 2023, Chengdu West Dimension Digital Technology Co., Ltd.; Cloud Yuqu LLC confirmed by e-mail to Forum that the <bdominionenergy.com>, <cdominionenergy.com>, <dominionanergy.com>, <dominiondenergy.com>, <dominiondnergy.com>, <dominioneanergy.com>, <dominionebnergy.com>, <dominionednergy.com>, <dominioneenrgy.com>, <dominionehnergy.com>, <dominionenerga.com>, <dominionenergby.com>, <dominionenerge.com>, <dominionenerghy.com>, <dominionenergj.com>, <dominionenergsy.com>, <dominionenerguy.com>, <dominionenergvy.com>, <dominionenergyg.com>, <dominionenergyh.com>, <dominionenergyo.com>, <dominionenergyr.com>, <dominionenergyt.com>, <dominionewnergy.com>, <dominionexnergy.com>, <dominionfnergy.com>, <dominionhenergy.com>, <dominionienergy.com>, <dominionjenergy.com>, <dominiononergy.com>, <dominionsnergy.com>, <fdominionenergy.com>, <hdominionenergy.com>, <sdominionenergy.com>, <vdominionenergy.com> domain names are registered with Chengdu West Dimension Digital Technology Co., Ltd.; Cloud Yuqu LLC and that Respondent is the current registrant of the domain names.
Chengdu West Dimension Digital Technology Co., Ltd.; Cloud Yuqu LLC has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd.; Cloud Yuqu 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 8, 2023, Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of May 30, 2023 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@bdominionenergy.com, postmaster@cdominionenergy.com, postmaster@dominionanergy.com, postmaster@dominiondenergy.com, postmaster@dominiondnergy.com, postmaster@dominioneanergy.com, postmaster@dominionebnergy.com, postmaster@dominionednergy.com, postmaster@dominioneenrgy.com, postmaster@dominionehnergy.com, postmaster@dominionenerga.com, postmaster@dominionenergby.com, postmaster@dominionenerge.com, postmaster@dominionenerghy.com, postmaster@dominionenergj.com, postmaster@dominionenergsy.com, postmaster@dominionenerguy.com, postmaster@dominionenergvy.com, postmaster@dominionenergyg.com, postmaster@dominionenergyh.com, postmaster@dominionenergyo.com, postmaster@dominionenergyr.com, postmaster@dominionenergyt.com, postmaster@dominionewnergy.com, postmaster@dominionexnergy.com, postmaster@dominionfnergy.com, postmaster@dominionhenergy.com, postmaster@dominionienergy.com, postmaster@dominionjenergy.com, postmaster@dominiononergy.com, postmaster@dominionsnergy.com, postmaster@fdominionenergy.com, postmaster@hdominionenergy.com, postmaster@sdominionenergy.com, postmaster@vdominionenergy.com. Also on May 8, 2023, the Chinese and English language 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, Forum transmitted to the parties a Notification of Respondent Default.
On June 5, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
The Panel notes that Complainant requests that the administrative proceeding be conducted in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. 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 Chinese language included in the Registration Agreement. 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.”).
In that regard, Complainant submits and has established that Respondent uses English terms such as “guy” and “energy” in the domain names, the domain names target a U.S.-based company and utilize the “.com” gTLD, which targets and is used by English-speaking Internet users, the pay-per-click advertising to which some of the domain names resolve are all in the English language, and Respondent has a history of targeting U.S.-based companies and using English terms in connection with its typosquatting. All of this shows that Respondent is proficient in the English language. The Panel has also noted the relative time and expense that would be involved in enforcing the Chinese language Registration Agreement.
Accordingly, and pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to show that the Respondent is conversant and proficient in the English language. After considering all of the circumstance of the proceeding, the Panel decides that the proceeding should be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant, Dominion Energy, is an energy provider. Complainant has rights in the DOMINION ENERGY mark through its registration of the mark and a family of DOMINION ENERGY marks with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,096,938, registered on September 16, 1997). See Compl. Annex D. Respondent’s <bdominionenergy.com>, <cdominionenergy.com>, <dominionanergy.com>, <dominiondenergy.com>, <dominiondnergy.com>, <dominioneanergy.com>, <dominionebnergy.com>, <dominionednergy.com>, <dominioneenrgy.com>, <dominionehnergy.com>, <dominionenerga.com>, <dominionenergby.com>, <dominionenerge.com>, <dominionenerghy.com>, <dominionenergj.com>, <dominionenergsy.com>, <dominionenerguy.com>, <dominionenergvy.com>, <dominionenergyg.com>, <dominionenergyh.com>, <dominionenergyo.com>, <dominionenergyr.com>, <dominionenergyt.com>, <dominionewnergy.com>, <dominionexnergy.com>, <dominionfnergy.com>, <dominionhenergy.com>, <dominionienergy.com>, <dominionjenergy.com>, <dominiononergy.com>, <dominionsnergy.com>, <fdominionenergy.com>, <hdominionenergy.com>, <sdominionenergy.com>, and <vdominionenergy.com> domain names (hereinafter referred to as the “Disputed Domain Names”) are identical or confusingly similar to Complainant’s mark as they incorporate the mark while some include a slight misspelling of the mark and/or add an additional letter while all appending the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the Disputed Domain Names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its DOMINION ENERGY mark in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead either hosts pay-per-click links or poses a security threat.
Respondent registered and uses the Disputed Domain Names in bad faith. Respondent engages in a pattern of bad faith registration and use and hosts pay-per-click links while diverting internet users. Additionally, Respondent engages in typosquatting. Furthermore, Respondent registered the disputed domain names with constructive and/or actual knowledge of Complainant’s rights in the DOMINION ENERGY mark.
B. Respondent
1. Complainant is a United States company engaged in the energy industry, including generating, transmitting, and distributing energy products by retail and wholesale means.
2. Complainant has established it rights in the DOMINION ENERGY mark through its registration on the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,096,938, registered on September 16, 1997).
3. Respondent registered the Disputed Domain Names on March 29, 2023.
4. Respondent has caused the Disputed Domain Names to be used to host pay-per-click links which also poses a security threat.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the DOMINION ENERGY mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,096,938, registered on September 16, 1997). See Compl. Annex D. The evidence also establishes that Complainant owns an entire family of DOMINION ENERGY marks. Registration of a mark with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant has registered its mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the Disputed Domain Names are identical or confusingly similar to Complainant’s DOMINION ENERGY mark. Complainant argues that Respondent’s Disputed Domain Names are identical or confusingly similar to Complainant’s DOMINION ENERGY mark. Under Policy ¶ 4(a)(i), misspelling a mark and/or adding an additional letter along with the “.com” gTLD are insufficient in differentiating the domain names from the relevant mark. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). The Disputed Domain Names incorporate Complainant’s mark while some include a misspelling and/or others add an additional letter while all of the domain names add the “.com” gTLD. Thus, as the Panel agrees, it finds that Respondent’s domain names are confusingly similar to Complainant’s DOMINION ENERGY mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
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 Names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have such 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)).
(a) Respondent has chosen to take Complainant’s DOMINION ENERGY mark and to use it in its domain names, misspelling the mark and/or adding an additional letter, which do not negate the confusing similarity between the domain names and the mark ;
(b) Respondent registered the Disputed Domain Names on March 29, 2023;
(c) Respondent has caused the Disputed Domain Names to be used to host pay-per-click links which also poses a security threat;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the Disputed Domain Names, nor has Complainant authorized or licensed Respondent to use its mark in the dispute domain names. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that 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 identifies Respondent as “Zhi Chao Yang.” See Registrar Verification Email. Thus, as the Panel agrees, it finds that Respondent is not commonly known by the Disputed Domain Names under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent is not using the Disputed Domain Names for any bona fide offering of goods or services, nor any noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), hosting pay-per-click links while posing a security threat is not a bona fide offering of goods or services, nor any noncommercial or fair use. See 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 notes Complainant’s screenshots of the Disputed Domain Names’ resolving webpages, which host pay-per-click links and/or pose a security threat. See Compl. Annex E. The Panel therefore finds that Respondent is not using the Disputed Domain Names for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the Disputed Domain Names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the Disputed Domain Names were registered in bad faith and have 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 Names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the Disputed Domain Names in bad faith by engaging in a pattern of bad faith and hosting pay-per-click links which divert internet users to the resolving sites of the domain names. Under Policy ¶ 4(b)(ii), registering multiple disputed domain names is evidence of a pattern of bad faith. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”). Additionally, under Policy ¶ 4(b)(iv), hosting pay-per-click links while diverting users to resolving websites is evidence of bad faith registration and use. See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (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).”). The Panel finds that Respondent registered 35 domain names that are the subject of the current proceeding, and that Respondent has diverted internet users to their resolving sites. See Compl. Annex E. Therefore, the Panel finds that Respondent registered and uses the Disputed Domain Names in bad faith under Policy ¶¶ 4(b)(ii) and (iv).
Secondly, Complainant argues that Respondent registered the Disputed Domain Names in bad faith by engaging in typosquatting. Under Policy ¶ 4(a)(iii), engaging in typosquatting is evidence of bad faith registration and use. See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). The Panel notes that the domain names include slight misspellings and/or an additional letter added. Thus, the Panel finds that Respondent registered and uses the Disputed Domain Names in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant contends that Respondent registered the Disputed Domain Names with constructive and/or actual knowledge of Complainant’s rights in the DOMINION ENERGY mark given Complainant’s extensive use of its mark. The Panel here notes that arguments of bad faith based on constructive notice have generally not been accepted in prior UDRP decisions. However, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the Disputed Domain Names and finds that actual knowledge is adequate evidence of bad faith registration under Policy ¶ 4(a)(iii). See 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). Complainant submits that the extensive use of its DOMINION ENERGY mark proves that Respondent had actual knowledge of Complainant’s rights in the mark. The Panel therefore finds that Respondent registered the Disputed Domain Names in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bdominionenergy.com>, <cdominionenergy.com>, <dominionanergy.com>, <dominiondenergy.com>, <dominiondnergy.com>, <dominioneanergy.com>, <dominionebnergy.com>, <dominionednergy.com>, <dominioneenrgy.com>, <dominionehnergy.com>, <dominionenerga.com>, <dominionenergby.com>, <dominionenerge.com>, <dominionenerghy.com>, <dominionenergj.com>, <dominionenergsy.com>, <dominionenerguy.com>, <dominionenergvy.com>, <dominionenergyg.com>, <dominionenergyh.com>, <dominionenergyo.com>, <dominionenergyr.com>, <dominionenergyt.com>, <dominionewnergy.com>, <dominionexnergy.com>, <dominionfnergy.com>, <dominionhenergy.com>, <dominionienergy.com>, <dominionjenergy.com>, <dominiononergy.com>, <dominionsnergy.com>, <fdominionenergy.com>, <hdominionenergy.com>, <sdominionenergy.com>, <vdominionenergy.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: June 6, 2023
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