Ambit Holdings, L.L.C. v. Yuki Toyoshima / Toyoshima Yuki
Claim Number: FA1705001729909
Complainant is Ambit Holdings, L.L.C. (“Complainant”), represented by George R. Schultz of Schultz & Associates, P.C., Texas, USA. Respondent is Yuki Toyoshima / Toyoshima Yuki (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ambitenergyjp.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelists in this proceeding.
Paul M. DeCicco, Sandra J. Franklin and Ho Hyun Nahm, Esq.(Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on May 2, 2017; the Forum received payment on May 2, 2017.
On May 5, 2017, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <ambitenergyjp.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2017 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@ambitenergyjp.com. Also on May 9, 2017, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Paul M. DeCicco, Sandra J. Franklin and Ho Hyun Nahm, Esq.(Chair) as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Ambit Holdings, L.L.C., is a residential and commercial provider of electricity and natural gas with business based in Dallas, Texas, USA. In connection with this business, Complainant uses the AMBIT and AMBIT ENERGY marks to promote its goods and services.
Complainant has rights in the marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. AMBIT—Reg. No. 3,786,848, registered May 11, 2010; AMBIT ENERGY—Reg. No. 3,443,624, registered June 10, 2008). Respondent’s <ambitenergyjp.com> is confusingly similar to Complainant’s marks as it contains both in their entirety—less the space in AMBIT ENERGY—and appends the geographic term “jp” and the generic top-level-domain (“gTLD”) “.com.”
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to register a domain name that reflects its marks. Respondent failed to use <ambitenergyjp.com> in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, <ambitenergyjp.com> resolves to a page with an unauthorized offering of Complainant’s services as an attempt to pass off as Complainant.
iii) Respondent registered and is using the disputed domain name in bad faith. Respondent passes off as an authorized representative of Complainant for Respondent’s commercial gain. Respondent had actual notice of Complainant’s rights in the marks and used a privacy service to register the domain name—further evidence of Respondent’s bad faith registration and use per Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that <ambitenergyjp.com> was registered on January 26, 2017. Respondent conditionally consents to the transfer of the domain name in its informal correspondence to the FORUM.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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."
Preliminary Issue 1: Consent to Transfer
The Forum was copied on documentation submitted from Respondent to Complainant, which is identified in this proceeding as “Other Correspondence.” In this document, Respondent purports to consent to the transfer of <ambitenergyjp.com>, stating in relevant part, “I do not need the domain anymore. If you want it, I can give it to you. I do not want to pay any money.” Correspondence—Respondent (May 10, 2017).
Respondent seems to consent to transfer <ambitenergyjp.com> to Complainant. However, after the initiation of this proceeding, GMO Internet, Inc. d/b/a Onamae.com placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. Where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel could forego the traditional UDRP analysis and order an immediate transfer of <ambitenergyjp.com>. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Howerver, the Panel notes that Respondent agrees to transfer the domain name only if there is no cost to Respondent. So Respondent’s consent to transfer is conditioned on Complainant’s agreement to not further pursue its rights (outside the UDRP) where Respondent might incur costs or damages. At a minimum Respondent’s consent is ambiguous as to what it may or may not require in return for transferring the domain name. Since Complainant has not agreed to Respondent’s terms of transfer there is no unconditional consent on the part of Respondent and Respondent’s offer lapses. Therefore, the Panel decides the case on the merits because Respondent’s consent to transfer appears to be conditioned.
Preliminary Issue 2: Supported Language Request
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Japanese 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 Japanese 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 weighs the relative time and expense in enforcing the Japanese 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.”). Complainant contends Respondent is conversant in English based upon the fact that the domain name itself is in English. The website published at the domain name makes heavy use of English text and spoken English videos. Portions of Respondent’s website offer Japanese translations of Complainant’s English promotional materials and Respondent actively translates from English to Japanese. Respondent’s correspondence regarding its consent to transfer is also in English. The Panel is of the view that Respondent's use of the English language on the website resolving from the disputed domain name, and in his correspondence to the , supports a determination that the proceeding should be in English.
Pursuant to UDRP Rule 11(a), therefore the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant asserts rights in the marks based upon registration with the USPTO (e.g. AMBIT—Reg. No. 3,786,848, registered May 11, 2010; AMBIT ENERGY—Reg. No. 3,443,624, registered June 10, 2008). Registration of a mark with a trademark authority such as the USPTO is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel therefore finds Complainant has rights in the AMBIT and AMBIT ENERGY marks.
Respondent’s domain name, <ambitenergyjp.com>, is confusingly similar to Complainant’s marks as it contains both in their entirety—less the space for AMBIT ENERGY—and appends the geographic term “jp” and the gTLD “.com”. Addition of a geographic term and a gTLD do not defeat a finding of confusing similarity per Policy ¶ 4(a)(i). Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel therefore finds Respondent’s domain name to be confusingly similar to Complainant’s marks.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)
(“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant argues Respondent is not commonly known by the disputed domain name. Where a Response is lacking, WHOIS information can substantiate a finding that a respondent is not commonly known by a disputed domain name; likewise, when a WHOIS privacy service is listed as the registrant and there is no evidence to the contrary, the Panel may find that a respondent is not commonly known by a disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum January 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). The WHOIS information listed “Whois Privacy Protection Service by oname.com” prior to the commencement of proceedings; after they commenced, the registrant was revealed to be “Yuki Toyoshima / Toyoshima Yuki.” The Panel therefore finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues Respondent failed to use <ambitenergyjp.com> in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, <ambitenergyjp.com> resolves to a webpage with an unauthorized offering of Complainant’s services in an attempt to pass off as Complainant. Use of a disputed domain name and its resolving website to pass itself off as a complainant for commercial gain demonstrates Respondent’s lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC., FA 1581942 (Forum Nov 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel recalls that Respondent was not authorized by Complainant to register a domain name that reflects Complainant’s marks, nor to sell Complainant’s services. The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant alleges Respondent registered and is using <ambitenergyjp.com> in bad faith as Respondent attempts to pass off as Complainant to attract Internet users for Respondent’s commercial gain through the offering of Complainant’s services. Use of a confusingly similar domain name to pass off as, and sell the products of, a complainant is bad faith behavior per Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). The Panel notes that the disputed domain name’s resolving website appropriates Complainant’s promotional materials and translates them into Japanese. The Panel therefore finds Respondent registered and used <ambitenergyjp.com> in bad faith.
Next, Complainant contends Respondent had actual knowledge of Complainant’s marks at time of registration. The Panel observes that the disputed domain name reflects Complainant’s marks and the resolving website contains Complainant’s promotional materials. Actual knowledge of another’s interest in a trademark prior to registering a domain name that is confusingly similar or identical to such mark is sufficient evidence of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). As such, the Panel finds further evidence of Respondent’s bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ambitenergyjp.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq.(Chair)
Paul M. DeCicco, Panelist
Sandra J. Franklin, Panelist
Dated: June 10, 2017
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