DECISION

 

Dominion Energy, Inc. v. Wu Yu

Claim Number: FA2310002068905

 

PARTIES

Complainant is Dominion Energy, Inc. ("Complainant"), represented by Mary Baril of McGuireWoods LLP, Virginia, USA. Respondent is Wu Yu ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <myaccountdominionenergy.com> ("Disputed Domain Name") registered with Dynadot 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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 31, 2023; Forum received payment on October 31, 2023.

 

On November 1, 2023, Dynadot Inc confirmed by e-mail to Forum that the <myaccountdominionenergy.com> domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot 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 2, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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@myaccountdominionenergy.com. Also on November 2, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On November 25, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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.

 

RELIEF SOUGHT

Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the DOMINION ENERGY mark established by its ownership of the portfolio of trademark and service mark registrations described below and extensive use of the mark in its energy business in the United States of America. 

 

Complainant explains that whilst it first registered the DOMINION ENERGY mark in 1997 (U.S. Registration No. 2,096,938), it began using the mark as its primary company identifier in 2017.

 

Complainant asserts that since it was established in 1909, it has grown to now employ over 17,000 people across 13 states, serving nearly seven million customers in the United States.

 

Complainant alleges that the Disputed Domain Name is confusingly similar to the DOMINION ENERGY mark in which it has rights; specifically arguing that the Disputed Domain Name is highly similar in sight, sound, and connotation to the DOMINION ENERGY mark and other marks within its family of marks.

 

It is contended that the Disputed Domain Name completely subsumes the DOMINION ENERGY mark, which alone makes the Disputed Domain Name confusingly similar to Complainant's mark. See, e.g., Dominion Energy, Inc. v. xu hai min, FA 2063476 (Forum Oct. 24, 2023) (finding <logindominionenergy.com> confusingly similar to the DOMINION ENERGY family of marks).

 

It is further alleged that the Disputed Domain Name only differs from the DOMINION ENERGY mark by the addition of the generic wording "my account", which Complainant argues is insufficient to differentiate the Disputed Domain Name from Complainant's mark. See, e.g., Webster Financial Corporation v. Donin Y Ivan, FA 2022322 (Forum Dec. 31, 2023) (finding <myaccount-hsabank.com> confusingly similar to HSA BANK).

 

Additionally Complainant argues that the Disputed Domain Name uses the very same Top-Level Domain (".com") as Complainant's legitimate website which Complainant hosts at <www.dominionenergy.com>. See Slep-Tone Ent. Corp. d/b/a Sound Choice Accompaniment Tracks v. Sound Choice Disc Jockeys, Inc., FA 93636 (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 argues that the risk of confusion is particularly high in this case, because consumers will expect to find Complainant at this URL.

 

Complainant next alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name arguing that Complainant is not commonly known as 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).

 

Additionally, Complainant asserts that it has never granted Respondent any license or other rights to use its DOMINION ENERGY mark in commerce for any purpose. See Foot Locker, Inc. v. Blezin Widmaer, FA 113283 (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").

 

Complainant refers to a screen capture of the website to which the Disputed Domain Name resolves which is exhibited in an annex to the Complaint which illustrates that Respondent's exhibited webpage hosts pay-per-click advertising lings that direct Internet users to websites of competitors of Complainant.

 

Complainant argues that such use does not constitute a bona fide offering of goods or services or in a non-commercial or fair use manner. See 7-Eleven, Inc. v. Lei Shi, FA 2036734 (Forum Apr. 26, 2023) ("where a respondent's disputed domain name is used to host commercial hyperlinks or advertisements, there is not a bona fide offering of goods or services or a legitimate noncommercial or fair use").

 

Moreover, Complainant adds that Respondent registered the Disputed Domain Name privately, which itself is evidence that Respondent lacks rights or legitimate interests in the Disputed Domain Name. See, e.g., Fareportal, Inc. v. VIETNAM DOMAIN PRIVACY SERVICES, FA 1729548 (Forum June 23, 2017) ("Using a privacy service to conceal the true identity of the registrant can further evince that a respondent is not commonly known by a disputed domain name.").

 

Complainant next alleges that Respondent registered and is using the Disputed Domain Name in bad faith, arguing that Complainant has continuously used the DOMINION ENERGY mark for nearly 5 years and owns numerous federal registrations for marks that incorporate DOMINION ENERGY, adding that searches across a number of Internet search engines for "Dominion Energy" returns multiple results referencing Complainant and its goods and services.

 

Complainant argues that in 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").

 

Furthermore, Complainant submits that the pay-per-click advertising featured on the website to which the Disputed Domain Name resolves, as shown in the exhibited screen capture, further demonstrates that Respondent registered the Disputed Domain Name in bad faith. See, e.g., The Vanguard Group, Inc. v. Milen Radumilo, FA 2054676 (Forum Aug. 17, 2023) (finding respondent's use of the disputed domain for pay-per-click advertising bad faith under the Policy). 

 

In conclusion Complainant argues that the evidence shows that Respondent is using the Disputed Domain Name to divert Internet users to Respondent's own website in an effort to deceive the public, and submits that Respondent's actions fully justify transfer of the Disputed Domain Name to Complainant as requested.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant carries on business using the DOMINION ENERGY mark generating, transmitting and distributing energy products and services in both retail and wholesale markets; and is the registered owner of a large portfolio of United States trademark and service mark registrations for, and including the DOMINION ENERGY mark including:

·       United States registered service mark DOMINION ENERGY registration number 2,096,938, registered on the Principal Register on September 16, 1997 for services in international classes 35, 37, 30 and 42.

·       United States registered trademark DOMINION ENERGY registration number 6,310,505 registered on the Principal Register on March 30, 2021 for goods n international class 9.

Complainant has averred that it first registered the DOMINION ENERGY mark in 1997 (U.S. Registration No. 2,096,938 supra), but began using DOMINION ENERGY as the company's primary identifier in 2017.

 

Complainant has an established Internet presence and maintains a website promoting its business at <www.dominionenergy.com>

 

The Disputed Domain Name <myaccountdominionenergy.com> was registered on May 11, 2023 and resolves to a parked webpage with pay-per-click links, and an offer to sell the Disputed Domain Name to the public for €1,000.

 

There is no information available about the Respondent, except for that provides in the Complaint, the Registrar's WhoIs and the information provided by the Registrar in response to the request by Forum for verification of the details of the registration of the Disputed Domain Name for the purposes of this proceeding. 

 

The Registrar has disclosed that Respondent, whose name is concealed by a privacy function on the published WhoIs, is the registrant 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 and 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

A.       Complainant's Rights

Complainant has provided convincing, uncontested evidence that it has rights in the DOMINION ENERGY mark, established by the ownership of the portfolio of trademark and service mark registrations described above and the reputation and goodwill that it has established in the mark by extensive use in its business providing energy products and services, employing over 17,000 people across 13 states, serving nearly seven million customers in the United States.

 

B.       Confusing Similarity

The disputed domain name <myaccountdominionenergy.com> consists of Complainant's DOMINION ENERGY mark in its entirety, preceded by the descriptive words "my account" and the gTLD extension <.com>.

Complainant's DOMINION ENERGY mark is clearly recognizable as being the dominant and only distinctive element in the Disputed Domain Name.

 

The descriptive term "my account" does not add any distinguishing element to the Disputed Domain Name, and does not prevent a finding that the Disputed Domain Name is confusingly similar to the DOMINION ENERGY mark in which Complainant has rights.

 

Similarly, the generic Top Level Domain ("gTLD") extension <.com> does not prevent a finding of confusing similarity because in the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration.

 

This Panel finds therefore that the Disputed Domain Name 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).

 

Rights or Legitimate Interests

Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the Disputed Domain Name arguing that

·       Complainant is not commonly known as DOMINION ENERGY;

·       Complainant has never granted Respondent any license or other rights to use its DOMINION ENERGY mark in commerce for any purpose;

·       the screen capture of the website to which the Disputed Domain Name resolves which is exhibited in an annex to the Complaint illustrates that Respondent is using the Disputed Domain Name to form the address of a website on which Respondent hosts pay-per-click advertising links that direct Internet users to websites of competitors of Complainant;

·       such use of the Disputed Domain Name does not constitute a bona fide offering of goods or services or in a non-commercial or fair use manner;

·       moreover, Respondent registered the Disputed Domain Name privately, which itself is infers that Respondent lacks rights or legitimate interests in the Disputed Domain Name.

 

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 the 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).

 

Registration and Use in Bad Faith

Complainant has adduced clear and convincing, uncontested evidence that it has registered trademark and service mark rights in the DOMINION ENERGY mark, which it first registered in the United States of America in 1997 but began use of it as its primary identifier in 2017.

 

Clearly Complainant's use of and rights in the DOMINION ENERGY mark long predate the registration and first use of the Disputed Domain Name, which was registered on May 11, 2023.

 

Complainant has exhibited a screen capture of its own principal website at <www.dominionenergy.com>, on which it markets its business.

 

DOMINION ENERGY is a distinctive mark, and given the reputation and goodwill that Complainant has established in the mark through its extensive use across the USA, and on Complainant's own principal website at <www.dominionenergy.com>, it is most improbable that the registrant of the Disputed Domain Name which incorporates the mark in its entirety as its dominant and only distinctive element, was chosen and registered without knowledge of Complainant and its DOMINION ENERGY mark.

 

This Panel finds therefore that, on the balance of probabilities, the Disputed Domain Name was chosen and registered in bad faith with Complainant in mind intending to take predatory advantage of Complainant's goodwill and reputation in the DOMINION ENERGY mark.

 

Complainant has exhibited a screen capture of the website to which the Disputed Domain Name resolves which is a simple website consisting of the words "Relevant searches", three links to third party websites which are labelled "Residential", "Fleet Gas Cards", and "Compare Electricity Prices".

 

The webpage also has what appears to be a search function labelled "Search Ads", and the text: ""Buy this domain The owner of myaccountdomionenergy.com is offering it for sale for an asking price of 1000 EUR!"

 

This Panel finds therefore that Respondent is using the Disputed Domain Name in bad faith to attract Internet traffic intended for Complainant and divert it to a pay-per-click site as supported by the uncontested evidence exhibited with the Complaint. Such use of Complainant's mark within the disputed domain name constitutes bad faith for the purpose of the Policy.

 

In order for Complainant to succeed on this argument, is not necessary that the pay-per-click links must resolve to competing websites. Bad faith is established by the use of the Disputed Domain Name to attract, confuse and misdirect Internet users and divert Internet traffic to the unrelated website from which Respondent is making financial gain.

 

 

Furthermore, the exhibited screen capture shows that Respondent is purporting to offer the Disputed Domain Name to the public for €1,000 which infers that Respondent registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the Disputed Domain Name.

 

In the circumstances of this Complaint, given that the Disputed Domain Name clearly targets the goodwill and reputation of Complainant, Respondent's registration or acquisition, with such intent, allows this Panel to infer that Respondent is using the Disputed Domain Name in bad faith.

 

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).

 

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 <myaccountdominionenergy.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

______________________________________________

 

James Bridgeman SC, Panelist

Dated: November 26, 2023