WTU Retail Energy L.P. v. Laksh Internet Solutions Private Limited
Claim Number: FA0807001214877
Complainant is WTU Retail Energy L.P. (“Complainant”), represented by Remy
M. Davis, of Thompson & Knight LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wtuenergy.com>, registered with Lead Networks Domains Pvt. Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 11, 2008.
On July 28, 2008, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <wtuenergy.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July
31, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 20, 2008
by which Respondent could file a response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's
registration as technical, administrative and billing contacts, and to
postmaster@wtuenergy.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 26, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <wtuenergy.com> domain name is confusingly similar to Complainant’s WTU mark.
2. Respondent does not have any rights or legitimate interests in the <wtuenergy.com> domain name.
3. Respondent registered and used the <wtuenergy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WTU Retail
Energy L.P., is an energy provider serving both residential and business
customers located in
Respondent registered the <wtuenergy.com> domain name on January 1, 2006. Respondent’s domain name resolves to a website featuring links to Complainant’s competitors along with other unrelated consumer products.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant asserts common law rights in the WTU mark based on continuous use in commerce since 1976. The Panel finds that a trademark registration is not the only way a complainant can establish rights in a mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant contends that it has been using the WTU mark
continuously since 1976, expending considerable effort and capital in the
promotion of the WTU mark. Moreover,
Complainant submits evidence of state trademark registrations registered with
the Secretary of State for
Complainant
contends that Respondent’s <wtuenergy.com>
domain name is confusingly similar to Complainant’s WTU mark. Respondent’s domain name contains
Complainant’s entire mark and adds the term “energy” to the mark. The Panel finds that Respondent’s use of the
term “energy” in its domain name is incidental when taking the name as a whole
due to Complainant’s operation within the energy industry. The Panel finds that generic terms with a
direct relation to the mark holder’s business is not a means by which Respondent
can differentiate a domain name from a mark under Policy ¶ 4(a)(i). See Marriott Int’l, Inc. v. Café au lait,
FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain
name <marriott-hotel.com> is confusingly similar to the complainant’s
MARRIOTT mark); see also Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to the complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which the complainant is engaged, does not take the
disputed domain name out of the realm of confusing similarity). Likewise, Respondent’s addition of the
generic top-level domain “gTLD” “.com” is not a distinguishing characteristic
under Policy ¶ 4(a)(i). See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the
top level of the domain name such as “.net” or “.com” does not affect the
domain name for the purpose of determining whether it is identical or
confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd.,
FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain
is irrelevant when establishing whether or not a mark is identical or
confusingly similar, because top-level domains are a required element of every
domain name.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the <wtuenergy.com> domain name. Under certain circumstances, Complainant’s assertion may establish a prima facie case, resulting in a burden shift from Complainant to Respondent to establish that it does have rights and legitimate interests in the disputed domain name. The Panel finds Complainant has met its burden in this case. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Because Respondent has failed to respond to Complainant’s Complaint, the Panel infers that Respondent does not have rights or legitimate interests in the <wtuenergy.com> domain name under Policy ¶ 4(a)(ii). See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel chooses to examine the evidence under the Policy ¶ 4(c) elements.
Complainant contends that Respondent is neither commonly known by the <wtuenergy.com> domain name nor licensed to register names featuring Complainant’s WTU mark. The Panel finds that without evidence suggesting otherwise, Respondent has not established rights or legitimate interests in the <wtuenergy.com> domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant has submitted evidence that Respondent is using its <wtuenergy.com> domain name to resolve to a website that features links to various websites offering competing energy services as well as links to companies offering other unrelated commercial products and services. The Panel infers from Respondent’s use that it is presumably collecting referral fees for each misdirected Internet user. The Panel finds that Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ (c)(iii). See Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the <wtuenergy.com> domain name to operate websites that provide Internet users with links to various competing energy services. The Panel finds that Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and evinces bad faith pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Furthermore, Respondent’s use will likely cause confusion as to Complainant’s sponsorship of and affiliation with the resulting websites. The Panel finds that use of its confusingly similar domain name for Respondent’s own commercial gain is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wtuenergy.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 8, 2008
National
Arbitration Forum
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