DECISION

 

Dominion Energy, Inc. v. Dominion Energy

Claim Number: FA2402002085599

PARTIES

Complainant is Dominion Energy, Inc. ("Complainant"), represented by Claire Hagan Eller of McGuireWoods LLP, Virginia, USA. Respondent is Dominion Energy ("Respondent"), Virginia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dominionenergyworld.com>, registered with HOSTINGER operations, UAB.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dr. Beatrice Onica Jarka as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 26, 2024; Forum received payment on February 26, 2024.

 

On February 27, 2024, HOSTINGER operations, UAB confirmed by e-mail to Forum that the <dominionenergyworld.com> domain name is registered with HOSTINGER operations, UAB and that Respondent is the current registrant of the name. HOSTINGER operations, UAB has verified that Respondent is bound by the HOSTINGER operations, UAB 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 March 4, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2024 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@dominionenergyworld.com. Also on March 4, 2024, 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.

 

A timely Response was received and determined to be complete on March 6, 2024.

 

On March 7, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dr. Beatrice Onica Jarka 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: CONSENT TO TRANSFER

By the Response, which is titled as no objection letter, the Respondent consents to handover the disputed domain to the Complainant. Nevertheless, in the present case the Panel considers that Respondent's form of consent to transfer may constitute a bad faith attempt to avoid a determination that would expose its alleged cybersquatting. This finding is strengthen by the fact that the consent was transmitted by the Respondent only after the URDP proceedings were triggered and after the cease and desist letter had been filed.   For this reason, the Panel will determine the case on its merits, rather than simply order the transfer of the domain name by consent. See  State Farm Mutual Automobile Insurance Company v. David Espinoza, FA 1958096 (Forum Aug. 31, 2021) ("The Panel also notes that the "consent-to-transfer" approach is one way for cybersquatters to avoid adverse findings against them. The Panel will decide this case on the merits.").

 

PARTIES' CONTENTIONS

A. Complainant

By the Complaint, the Complainant asserts that:

-       the disputed domain name is highly similar in sight, sound, and connotation to the DOMINION ENERGY Marks.

-       the disputed domain only differs from the DOMINION ENERGY mark with respect to the addition of the generic word "world", which is insufficient to differentiate the disputed domain from Complainant's mark.

-       the risk of confusion is particularly high in this case, as the Complainant itself uses the <dominionenergy.com> domain as the domain for its central webpage and consumers will expect to find Dominion Energy at this URL, and so the Respondent's use of the disputed domain that purposely incorporates Dominion Energy's mark exacerbates the likelihood that consumers will be confused.

-       Respondent has no rights or legitimate interest in the disputed domain name.

-       Complainant has never granted Respondent any license or other rights to use the DOMINION ENERGY Family of Marks in commerce for any purpose.

-       On information and belief, Respondent is not commonly known by DOMINION ENERGY.

-       The disputed domain resolves to a webpage advertising purported energy-related services, but Complainant suspects the site is fake and may actually be used for fraudulent purposes or to scam customers, which does not constitute use of the disputed domain to provide a bona fide offering of goods or services or in a non-commercial or fair use manner.

-       Respondent registered the disputed domain privately, which itself is evidence that Respondent lacks rights or legitimate interests in the disputed domain.

-       The Complainant has continuously used the DOMINION ENERGY Family of Marks since their respective inception and has specifically used the DOMINION ENERGY mark for nearly 5 years. Dominion Energy has obtained federal registrations for the DOMINION ENERGY Family of Marks.

-       Performing searches across a number of internet search engines for "Dominion Energy" returns multiple results referencing Dominion Energy and its goods and services.

-       In light of Dominion Energy's extensive use of the DOMINION ENERGY Family of Marks, there can be little doubt that Respondent registered the disputed domain with Dominion Energy and its marks squarely in mind.

-       The suspected fake website hosted at the disputed domain further demonstrates that Respondent registered the disputed domain in bad faith.

-       The Respondent's lack of rights of legitimate interests in the disputed domain is further demonstrated by Respondent's actions following the Complainant attempts to address this issue, as the Complainant attempted to contact Respondent in January 2024, demanding that Respondent cease using the disputed domain. In response to this cease and desist, Respondent took efforts to try and make the website appear to be legitimate.

-       These edits—which cannot reasonably be construed as reflecting actual changes to a legitimate business—demonstrate Respondent's bad faith.

-       Respondent is using the disputed domain to divert internet users to Respondent's own website in an effort to deceive the public.

-       Respondent's actions fully justify transfer of the disputed domain to the Complainant.

 

B. Respondent

Respondent transmitted a no objection letter by which he states the following:

"I have taken a domain that is dominionenergyworld.com but after taking it is under my notice that is having trade mark and I have received objections after changing required details also.

They have mentioned in notice to handover the domain to dominion energy I have no objection to hand over the domain without any issues

I apologize for the incident occurred please give a guide to transfer domain to dominion energy.

Thanking you"

 

FINDINGS

The Complainant is the holder of the DOMINION ENERGY Marks and the disputed domain name is highly similar in sight, sound, and connotation to the DOMINION ENERGY mark. The Complainant has never granted Respondent any license or other rights to use the DOMINION ENERGY family of Marks in commerce for any purpose.

The disputed domain resolves to a webpage advertising purported energy-related services, but Complainant suspects the site is fake and may actually be used for fraudulent purposes or to scam customers, which does not constitute use of the disputed domain to provide a bona fide offering of goods or services or in a non-commercial or fair use manner and represent an indication that the disputed domain name had been registered and is being used in bad faith. Although the Respondent has "no objection to hand over the domain without any issues", such consent was issued only after the UDRP proceedings was triggered and after a cease and desist letter was transmitted to the Respondent on January 24, 2024. 

 

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.

 

Identical and/or Confusingly Similar

The Panel finds that the disputed domain name is highly similar in sight, sound, and connotation to the DOMINION ENERGY Marks which belong to the Complainant, as it only differs from the DOMINION ENERGY mark with respect to the addition of the generic word "world", which is insufficient to differentiate the disputed domain from Complainant's mark.

The Panel notes that the risk of confusion is particularly high in this case, as the Complainant itself uses the <dominionenergy.com> domain as the domain for its central webpage and consumers will expect to find the Complainant at this URL, and so the Respondent's use of the disputed domain that purposely incorporates Dominion Energy's mark exacerbates the likelihood that consumers will be confused.

 

Accordingly, the Panel finds that the Complainant succeeded in establishing the Policy Paragraph 4(a)(i) element.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have 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)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii).

The Panel notes a series of circumstances which indicate that the Respondent lacks any rights and legitimate interests in the disputed domain name, as follows:

 

-       Complainant has never granted Respondent any license or other rights to use the DOMINION ENERGY Family of Marks in commerce for any purpose.

-       On information and belief, Respondent is not commonly known by DOMINION ENERGY.

-       The disputed domain resolves to a webpage advertising purported energy-related services, but Complainant suspects the site is fake and may actually be used for fraudulent purposes or to scam customers, which does not constitute use of the disputed domain to provide a bona fide offering of goods or services or in a non-commercial or fair use manner.

-       Respondent registered the disputed domain privately.

-       The Complainant has continuously used the DOMINION ENERGY Family of Marks since their respective inception and has specifically used the DOMINION ENERGY mark for nearly 5 years. Dominion Energy has obtained federal registrations for the DOMINION ENERGY Family of Marks.

-       Performing searches across a number of internet search engines for "Dominion Energy" returns multiple results referencing Dominion Energy and its goods and services.

-       The Respondent registered the disputed domain with Dominion Energy and its marks squarely in mind.

-       The suspected fake website hosted at the disputed domain further demonstrates that Respondent registered the disputed domain in bad faith.

-       The Respondent's lack of rights of legitimate interests in the disputed domain is further demonstrated by Respondent's actions following the Complainant's attempts to address this issue, as the Complainant attempted to contact Respondent in January 2024, demanding that Respondent cease using the disputed domain. In response to this cease and desist, Respondent took efforts to try and make the website appear to be legitimate.

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 the Complainant succeeded in establishing also the Policy Paragraph 4(a)(ii) element.

 

Registration and Use in Bad Faith

Complainant asserts a series of circumstances to establish that Respondent registered and uses the disputed domain name in bad faith.

In this respect, the disputed domain resolves to a webpage advertising purported energy-related services, which Complainant suspects is fake and may actually be used for fraudulent purposes or to scam customers, as it is clear that the Respondent registered the disputed domain name knowingly of the Complainant's trademark.

There is further bad faith resulting from the behavior of the Respondent, following receiving the cease and desist letter as Respondent took efforts to try and make the website appear to be legitimate.

As per the Complainant, these edits cannot reasonably be construed as reflecting actual changes to a legitimate business.

Therefore, the Panel finds that the Respondent has registered the disputed domain in bad faith and is using the disputed domain name in bad faith to divert internet users to Respondent's own website in an effort to deceive the public.

As Respondent has not filed a formal Response or attempted by any other means to rebut the Complainant's assertion on bad faith registration and use the Panel finds that the Complainant succeeded in establishing also the Policy Paragraph 4(a)(iii) element.

 

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

 

 

 

Dr. Beatrice Onica Jarka Panelist

Dated: March 21, 2024