DECISION

 

Power Home Solar, LLC v. Jordan Kleinsmith

Claim Number: FA2204001991769

 

PARTIES

Complainant is Power Home Solar, LLC (“Complainant”), represented by Michael Burke of DarrowEverett LLP, Massachusetts, USA.  Respondent is Jordan Kleinsmith (“Respondent”), Michigan, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <powerhomelawsuit.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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 11, 2022; the Forum received payment on April 11, 2022.

 

On April 12, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <powerhomelawsuit.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 April 18, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2022 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@powerhomelawsuit.com.  Also on April 18, 2022, 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 April 20, 2022.

 

On April 26, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

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.

 

RELIEF SOUGHT

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

 

PRELIMINARY ISSUE: NON-UDRP LEGAL ARGUMENTS

Respondent argues various legal points pursuant to the 1^st Amendment to the Constitution of the United States of America as they may apply to the fair use and protections against libel when making verifiably true claims against abusive businesses, despite referencing their trademarks.  The instant dispute is governed by the UDRP and not the Constitution of the United States of America, so the Panel shall disregard these arguments in these proceedings.  While Policy ¶ 4(k) allows the parties to litigate these points in court, the Panel finds that these arguments are not applicable to this arbitration proceeding within the scope of the UDRP and its elements.  See Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else). 

 

Accordingly, the following analysis is strictly confined to an analysis under the UDRP and does not address any arguments made by either party with respect to the Constitution of the United States of America.

 

PARTIES' CONTENTIONS

A.   Complainant

1.     Complainant, Power Home Solar, LLC, uses its POWERHOME mark in relation to solar and other energy systems. Complainant maintains registration in its POWERHOME mark with the United States Patent and Trademark Office (“USPTO”). See Amend. Compl. Exs. B – D. The <powerhomelawsuit.com> domain name is identical or confusingly similar to Complainant’s POWERHOME mark because it incorporates Complainant’s mark while adding in the term “lawsuit” and the “.com” generic top-level domain (“gTLD”) to form a domain name.

2.    Respondent does not have any rights or legitimate interests in the <powerhomelawsuit.com> domain name because Respondent is not commonly known by the domain name nor has Respondent been authorized to use Complainant’s POWERHOME mark. Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent purports to offer unauthorized legal services in connection with a class action lawsuit.

3.    Respondent registered and uses the <powerhomelawsuit.com> domain name in bad faith because Respondent makes use of a domain name as an attraction for commercial gain by purporting to offer illegal legal services.

 

B.   Respondent

1.    Respondent, Jordan Kleinsmith, asserts that it has properly affixed a disclaimer showing Complainant as the owner of its respective mark.

2.    Respondent argues that it makes a legitimate noncommercial or fair use of the <powerhomelawsuit.com> domain name because Respondent as a way for itself and alleged victims to fight Complainant’s alleged abusive business practices through whatever legal means possible.

3.    Respondent argues that it did not register or use the <powerhomelawsuit.com> domain name in bad faith because Respondent provides general guidance to alleged individual victims of Complainant’s practices seeking relief through starting their own class action lawsuits. Respondent asserts that it has never accepted any compensation while operating its website.

 

FINDINGS

1.    Respondent’s <powerhomelawsuit.com> domain name is confusingly similar to Complainant’s POWERHOME mark.

2.    However, Complainant has failed to make a prima facie case that Respondent does not have any rights or legitimate interests in the <powerhomelawsuit.com> domain name.

3.    Complainant has failed to establish that Respondent registered or used the <powerhomelawsuit.com> domain name 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 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

Complainant asserts rights in the POWERHOME mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The relevant date to establish rights in a mark is the application filing date. See Complainant provides copies of its registration in the POWERHOME mark with the USPTO (e.g. Reg. No. 6,336,493 – Registered on April 27, 2021 / Filed March 25, 2020). See Amend. Compl. Ex. D. Therefore, the Panel finds that Complainant has rights in the POWERHOME mark under Policy ¶ 4(a)(i).

 

Complainant argues that the <powerhomelawsuit.com> domain name is identical or confusingly similar to Complainant’s POWERHOME mark because it incorporates Complainant’s POWERHOME mark while adding in the term “lawsuit” and the “.com” gTLD to form a domain name. A domain name may be found to be identical or confusingly similar to a complainant’s mark, under Policy ¶ 4(a)(i), despite the addition of a term and a gTLD. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the <powerhomelawsuit.com> domain name is identical or confusingly similar to Complainant’s POWERHOME mark under Policy ¶ 4(a)(i).

 

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), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).

 

Respondent argues that it has rights or legitimate interests in the <powerhomelawsuit.com> domain name because Respondent properly displays a disclaimer on the resolving website. A respondent may still have rights or legitimate interests in a domain name, under Policy ¶ 4(c)(ii), where the resolving website conspicuously provides a disclaimer. See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (finding that the existence of a disclaimer on a disputed domain name’s resolving site that “is certainly visible and makes its basic point clear enough” is sufficient to mitigate Internet user confusion). Respondent asserts that states that the POWERHOME mark is the property of its respective owner. See Resp. Ex. A. Therefore, the Panel finds that Respondent has rights or legitimate interests in the <powerhomelawsuit.com> domain name under Policy ¶ 4(a)(ii).

 

Respondent argues that it has rights or legitimate interests in the <powerhomelawsuit.com> domain name because Respondent operates a complaint site against Complainant. Use of a domain name to host a complaint site may sufficient for a respondent to have rights or legitimate interests in a domain name under Policy ¶ 4(c)(ii). See Shell Int’l Petroleum Co. Ltd. v. Donovan, D2005-0538 (WIPO Aug. 8, 2005) (“The use of a domain name to criticize a company is prima facie fair use.  Therefore, the Panel finds that Respondent has rights or legitimate interests in the <powerhomelawsuit.com> domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum July 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).

 

Further, as the Panel concludes that Respondent has rights or legitimate interests in the <powerhomelawsuit.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel may also find that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).

 

Respondent argues that it registered and uses the <powerhomelawsuit.com> domain name not in bad faith because Respondent uses the domain name to operate a complaint site. Use of a domain name to host a complainant site may be sufficient to not constitute bad faith under Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. GreenPeople, FA 550345 (Forum Oct. 25, 2005) (Finding the respondent’s complaint website regarding the complainant, which consisted of the complainant’s mark followed by “sucks,” did not amount to bad faith registration and use pursuant to Policy ¶4(a)(iii).)). Respondent asserts that its website is used to provide support in complaint against Complainant’s alleged actions. See Resp. Ex. A. Therefore, the Panel finds that Respondent did not register or use the <powerhomelawsuit.com> domain name in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <powerhomelawsuit.com> domain name be RETAINED by Respondent.

 

 

John J. Upchurch, Panelist

Dated:  May 5, 2022