DECISION

 

Dominion Energy, Inc. v. W S / WIS INC

Claim Number: FA2310002068908

 

PARTIES

Complainant is Dominion Energy, Inc. ("Complainant"), represented by Mary Baril of McGuireWoods LLP, Virginia, USA. Respondent is W S / WIS INC ("Respondent"), Cayman Islands.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dominionenergywellness4u.com>, registered with GoDaddy.com, LLC.

 

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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

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

 

On October 31, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <dominionenergywellness4u.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 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@dominionenergywellness4u.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 24, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.)  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 domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant Dominion Energy, Inc. ("Dominion Energy" or "Complainant") is a Fortune 500 company that generates, transmits, and distributes energy products at retail and wholesale. Dominion Energy is a leader in the clean energy transition. Among Dominion Energy's registrations for the DOMINION ENERGY Family of Marks, Dominion Energy owns U.S. Registration No. 2,096,938, for the DOMINION ENERGY word mark. Dominion Energy also owns Registration No. 5,292,987 for the Logo. Respondent's <dominionenergywellness4u.com> domain name is confusingly similar to Complainant's DOMINION ENERGY mark as it wholly incorporates the mark and adds the descriptive wording "wellness 4 u"" and the ".com" generic top-level-domain ("gTLD").

Respondent is W S / WIS INC, Cayman Islands. Respondent has no legitimate interest in the <dominionenergywellness4u.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the DOMINION ENERGY mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain resolves to a webpage featuring a purported "Free AI Assistant" download, which Complainant suspects is malware.

Respondent registered and uses the <dominionenergywellness4u.com>  domain name in bad faith. Respondent is attempting to trade off of Dominion Energy's substantial goodwill in the DOMINION ENERGY Family of Marks. The use of a privacy service to register the disputed domain name gives rise to a rebuttable presumption of Respondent's bad faith. Respondent is engaging in cybersquatting to disrupt Dominion Energy's business and to trade on the substantial goodwill embodied in the DOMINION ENERGY Family of Marks.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant Dominion Energy, Inc. is a Fortune 500 company that generates, transmits, and distributes energy products at retail and wholesale. Dominion Energy is a leader in the clean energy transition. Among Dominion Energy's registrations for the DOMINION ENERGY Family of Marks, Dominion Energy owns U.S. Registration No. 2,096,938, for the DOMINION ENERGY word mark. Dominion Energy also owns Registration No. 5,292,987 for the Logo. Further, Further, Respondent's domain uses the very same top-level domain (".com") as Dominion Energy's legitimate websites, such as <dominionenergy.com>. Respondent's <dominionenergywellness4u.com> domain name is confusingly similar to Complainant's DOMINION ENERGY mark as it wholly incorporates the mark and adds the descriptive wording "wellness 4 u"" and the ".com" generic top-level-domain ("gTLD").

 

Respondent created the <dominionenergywellness4u.com> domain name on October 9, 2023.

Respondent has no rights or legitimate interest in the <dominionenergywellness4u.com> domain name. Respondent registered the domain without Dominion Energy's authorization. Respondent is not known by, and has no legitimate reason to use, Dominion Energy in a domain name. The domain resolves to a webpage featuring a purported "Free AI Assistant" download, which Complainant suspects is malware. No legitimate interest is served by Respondent using a domain name confusingly similar to Complainant's mark, without Complainant's authorization ,for no other purpose than downloads, whether suspected malware or not.

Respondent registered and uses the <dominionenergywellness4u.com> domain name in bad faith. It is more likely than not that Respondent targeted Complaint's DOMINION ENERGY mark when registering and using the domain name. Respondent used the domain name to mislead Internet users and to disrupt Complainant's business. Respondent's use of the confusingly similar domain name, without Complainant's authorization, for no other purpose than a download is bad faith.

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

 

Complainant has rights in the <dominionenergywellness4u.com> domain name under Policy 4(a)(i) based upon registration with the USPTO.

 

Respondent's <dominionenergywellness4u.com> is confusingly similar to Complainant's DOMINION ENERGY mark as it wholly incorporates the mark and adds the descriptive wording "wellness 4 u"" and the ".com" generic top-level-domain ("gTLD"). 

 

Rights or Legitimate Interests

 

Respondent does not have rights or legitimate interests in the <dominionenergywellness4u.com> domain name because Respondent is not licensed or authorized to use Complainant's DOMINION ENERGY mark and is not commonly known by the disputed domain name. 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."). 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).

Respondent has not used, nor made any demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Instead, the domain resolves to a webpage featuring a purported "Free AI Assistant" download, which Complainant suspects is malware. The use of malware does not constitute use of a domain to provide a bona fide offering of goods or services or in a non-commercial or fair use manner. See, Adobe Inc. v. Jang Wang, FA2307002052890 (Forum August 8, 2023) (finding respondent's use of the disputed domain to disseminate malware disguised as free AI software does not give rise to rights or legitimate interests under the Policy). No legitimate interest is served by Respondent using a domain name confusingly similar to Complainant's mark, without Complainant's authorization, for no other purpose than downloads, whether suspected malware or not.

Moreover, Respondent registered the domain privately, which itself is evidence that Respondent lacks rights or legitimate interests in the Domain. See, e.g., Fareportal, Inc. v. VIETNAM DOMAIN PRIVACY SERVICES, FA1704001729548 (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.").

 

Registration and Use in Bad Faith

 

Respondent registered the <dominionenergywellness4u.com> domain name with Dominion Energy 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"); Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, No. D2000-0911 (WIPO 2000) ("[T]he fact that Respondent chose to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name [at issue.]"). See also Black Hills Ammunition, Inc. v. Wall, FA1541570 (Forum Mar. 17, 2014) (finding actual knowledge because there was no legitimate reason for Respondent "to register a domain name containing 'Black Hills Amo' other than to trade on Complainant's trademark rights and that 'Black Hills Amo' means nothing other than Complainant's trademark"); GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (NAF Mar. 13, 2012) ("a finding of bad faith hinges squarely on the probability that it was more likely than not that respondent knew of, and targeted, complainant's trade mark").

 

Respondent's use of the confusingly similar domain name, without Complainant's authorization, for no other purpose than a download, whether suspected malware or not, is bad faith. See, e.g., Adobe Inc. v. Jang Wang, FA2307002052890 (Forum August 8, 2023) (finding respondent's use of the disputed domain to disseminate malware disguised as free AI software is indicative of bad faith registration and use under the Policy).

The use of a privacy service to register the disputed domain name gives rise to a rebuttable presumption of Respondent's bad faith. See, e.g., United States Postal Service v. Gary Wiggin / JY, FA 1708540 (Forum Jan. 30, 2017) ("Respondent registered the disputed domain name using a WHOIS privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. Therefore, this Panel is willing to find bad faith registration on these grounds alone.") Respondent has failed to rebut the presumption of bad faith.

 

 

DECISION

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

 

Accordingly, it is Ordered that the <dominionenergywellness4u.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: December 6, 2023