DECISION

 

Dominion Energy, Inc. v. satyanarayan behera

Claim Number: FA2403002087867

 

PARTIES

Complainant is Dominion Energy, Inc. ("Complainant"), United States, represented by Mary D. Baril of McGuireWoods LLP, United States. Respondent is satyanarayan behera ("Respondent"), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <dominion-energy.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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 11, 2024; Forum received payment on March 11, 2024.

 

On March 11, 2024, GoDaddy.com, LLC confirmed by email to Forum that the <dominion-energy.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 March 18, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 2024 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@dominion-energy.com. Also on March 18, 2024, the Written Notice of the Complaint, notifying Respondent of the email 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 on March 25, 2024. The Panel notes that the Response omits the certification statement that is required by Paragraph 5(c)(viii) of the Rules and fails to comply with the Rules in various other respects.

 

On March 25, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin 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.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a Fortune 500 company that generates, transmits, and distributes energy products. Complainant employs more than 17,000 people and serves nearly 7 million customers in the United States. Complainant has used the DOMINION ENERGY mark since 1987 and has used it as the company's primary identifier since 2017. Complainant owns several related United States trademark registrations, including a registration that issued in 1997 for DOMINION ENERGY in standard character form.

 

The disputed domain name <dominion-energy.com> was registered in March 2024. The name is registered in the name of a privacy registration service on behalf of Respondent. The domain name resolves to a website hosted by the registrar that is composed of pay-per-click advertisements, most of which appear to relate to Complainant or competitors thereof. Complainant states that Respondent is not commonly known by the domain name, is not associated with Complainant, and is not authorized to use Complainant's mark.

 

Complainant contends on the above grounds that the disputed domain name <dominion-energy.com> is identical or confusingly similar to its DOMINION ENERGY mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

B. Respondent

The uncertified Response states as follows:

 

What is the issue you are facing with my domain

 

You are demanding to handover over domain

 

I have purchased it from GoDaddy it is not free to me and I am from India I think you don't any trade mark in India

 

If you have any trade mark issue from India I am keeping for sale you can buy

 

I have kept this for sale if you have any objections you can buy it from GoDaddy.

 

FINDINGS

The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in 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.

 

Identical and/or Confusingly Similar

The disputed domain name <dominion-energy.com> corresponds to Complainant's registered DOMINION ENERGY trademark, substituting a hyphen for the space and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Dominion Energy, Inc. v. Candie Deloach / Excella, FA 2083487 (Forum Mar. 5, 2024) (finding <dominionnenergy.com> confusingly similar to DOMINION ENERGY); Dominion Energy, Inc. v. Sohail Shahzad / Voice Tech Int, FA 2081884 (Forum Feb. 23, 2024) (finding <dominionenergys.com> confusingly similar to DOMINION ENERGY); Monster Energy Co. v. David Czinczenheim, D2023-2285 (WIPO Aug. 21, 2023) (finding <monster-energy.com> identical to MONSTER ENERGY); First Coast Energy, L.L.P. v. JIM BAZLEY / FIRST COAST ENERGY, FA 1554730 (Forum May 27, 2014) (finding <firstcoast-energy.com> confusingly similar to FIRST COAST ENERGY); Suncor Energy Inc. v. Whois Privacy Protection Service, Inc. / Andre Bechamp, D2012-2123 (WIPO Dec. 27, 2012) (finding <suncor-energy.com> confusingly similar to SUNCOR ENERGY). The Panel considers the disputed domain name to be identical to a mark in which Complainant has rights.

 

Rights or Legitimate Interests

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been for a registrar-generated parking page composed of pay-per-click links, most of which appear to relate to Complainant or competitors thereof. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Dominion Energy, Inc. v. Zhi Chao Yang, FA 2042086 (Forum June 6, 2023) (finding lack of rights or interests in similar circumstances); Robert Half International Inc. v. Manda Tanda, FA 2022740 (Forum Dec. 29, 2022) (same).

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

Registration and Use in Bad Faith

Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."

 

Respondent used a privacy registration service and what appears to be incomplete and possibly fictitious underlying registration information to register a domain name corresponding to Complainant's registered mark, and its only apparent use has been to display a registrar-generated parking page composed of pay-per-click links. Respondent has failed to come forward with any explanation for the selection of the domain name, and the noncompliant Response suggests that Respondent seeks to sell the domain name at a price exceeding the registration cost. Under the circumstances, the Panel considers it reasonable to infer that Respondent registered the domain name with Complainant's mark in mind, intending to create and exploit confusion with Complainant and its mark, most likely either by selling the domain name or by using it to attract Internet users seeking Complainant, and is maintaining the domain name for that purpose. See, e.g., Warburg Pincus & Co. v. sinopac, FA 2063792 (Forum Oct. 19, 2023) (finding bad faith registration and use in similar circumstances); Robert Half International Inc. v. Manda Tanda, supra (same). The Panel finds that the disputed domain name was registered and is being used in bad faith.

 

DECISION

Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

 

 

David E. Sorkin, Panelist

Dated: March 25, 2024