The AES Corporation v. Jason Galata / Advanced Electrical Specialists
Claim Number: FA2106001951399
Complainant is The AES Corporation (“Complainant”), represented by Bryce J. Maynard of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Jason Galata / Advanced Electrical Specialists (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aesohio.com>, registered with FastDomain Inc..
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2021; the Forum received payment on June 17, 2021.
On June 17, 2021, FastDomain Inc. confirmed by e-mail to the Forum that the <aesohio.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 June 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2021 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@aesohio.com. Also on June 22, 2021, 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 July 20, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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. 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
Complainant asserts trademark rights in AES and submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is an electricity provider trading under the name AES;
2. Complainant owns, inter alia, United States Patent and Trademark Office (“USPTO”) Reg. No. 1,672,115, registered January 14, 1992 for the mark, AES;
3. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating that trademark; and
4. Respondent registered the disputed domain name on July 17, 2012, but has not used it since.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding based on 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[i]. Complainant provides evidence of a national registration for the trademark AES[ii] and so the Panel finds that Complainant has rights in that trademark.
The domain name takes the trademark to which it adds the geographic name “Ohio” and the “.com” generic top-level domain. Neither of those additions carry any distinctive value and the trademark remains the recognizable part of the disputed domain name. It follows that the Panel finds the disputed domain name to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy[iii].
Accordingly, Complainant has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
The publicly available WhoIs information shielded the name of the underlying domain name registrant by a privacy service but in consequence of these proceedings the Registrar disclosed the name of the holder as “Jason Galata” of “Advanced Electrical Specialists”. That name does not provide any prima facie evidence that Respondent might be known by the disputed domain name. There is nothing else to suggest that Respondent is commonly known by the domain name and there is no evidence Respondent has trademark rights of its own. The possibility that the registrant organization, “Advanced Electrical Specialists”, might, if a genuine business entity, be known by its initial letters, AES, is of no assistance to Respondent since prior panels have consistently held that the evidence must show use by a respondent of the exact term corresponding with the at-issue domain name. Here, there is no evidence of the organization name, nor any contraction of it.
Complainant asserts, without providing evidence, that the name has not been used. The Panel sees for itself that the name does not, at this time, resolve to a website of any kind and in the circumstances the Panel accepts the assertion of non-use. There is nothing else to show that the domain name has been used in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use. The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name[v].
The onus shifts to Respondent to establish a legitimate interest and, absent a Response, that prima facie case is not rebutted. The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.
Complainant does not argue for the application of any of those scenarios. Instead, it claims bad faith registration premised on what it asserts to be a high degree of public awareness of its trademark and argues passive holding (use) in bad faith[vi].
Complainant states that it generates and distributes electric power in 15 countries and employs over 10,000 people. It asserts that it sells billions of dollars of services annually under the trademark and prominently uses the trademark in connection with the advertising, marketing, distribution, and provision of its services. Accordingly, Complainant asserts that its trademark “has acquired an extremely high level of secondary meaning”.
Were the matter for determination one of common law rights under paragraph 4(a)(i) of the Policy, the Panel would not be prepared to find those rights established without actual evidence. However, the Panel is entitled to accept reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory[vii] and so, for example, the USPTO trademark registration cited above carries a claim to first use of the mark in 1981. Actual knowledge of the trademark by Respondent may be reasonably inferred where the trademark at issue is likely to have some level of notoriety[viii]. Further, the Panel has already found the disputed domain name to be confusingly similar to the trademark and its very nature suggests some association with or endorsed by Complainant. Furthermore, the Panel reminds itself that the Respondent’s identity was shielded by a privacy service. Absent a reasoned Response, the Panel has not been presented with any reason for adoption of Complainant’s mark and, taken as a whole, the evidence justifies the Panel’s finding of registration in bad faith.
This leaves to be considered use in bad faith where there is no use. The Panel refers to the reasoning first laid out in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The panelist there posed the question: “what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith?”, concluding that “the question can only be answered in respect of the particular facts of a specific case”, whereafter he paid regard to circumstances showing that (i) the complainant’s trademark was widely known, (ii) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name, (iii) the respondent has taken active steps to conceal its identity and had provided false contact details, and (iv) it was not possible to conceive of any plausible use of the domain name by the respondent that would not be illegitimate in the sense of infringing complainant’s rights.
Not all the circumstances coincide. In particular, there is a lesser reputation likely to be at stake here, but there is just enough in this Panel’s assessment to draw a finding of passive holding and “use” in bad faith.
The Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aesohio.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: July 22, 2021
[i] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[ii] This registration is not in the name of Complainant but later dated registrations in evidence do stand in the correct name. The addresses and other corporate information coincide and what is missing - proof of the change of name - is non-critical in this instance. It should be added that this registration is also for a word and device mark but the device component is not a dominant feature of the mark and, for the purposes of this aspect of the Policy and comparison purposes, the Panel has treated the registration as being for a word mark.
[iii] See, for example, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i); see also General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) finding <gm-uzbekistan.com> confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis; AXA China Region Ltd. v. KANNET Ltd., Case No. D2000-1377 (WIPO Nov. 29, 2000) finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”).
[vi] See, for example, Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances.
[vii] See, for example, 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; 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.”)
[viii] See, for example, AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”).
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