national arbitration forum

 

DECISION

 

Save On Energy, LLC v. Joseph Crono

Claim Number: FA1304001496896

PARTIES

Complainant is Save On Energy, LLC (“Complainant”), represented by Rodrick J. Enns, North Carolina, USA.  Respondent is Joseph Crono (“Respondent”), New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <savonenergy.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 26, 2013; the National Arbitration Forum received payment on April 26, 2013.

 

On April 29, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <savonenergy.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 May 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2013 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@savonenergy.com.  Also on May 1, 2013, 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 May 3, 2013.

 

On May 31, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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" 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

This Complaint is based on the following trademarks:

 

SAVEONENERGY.COM, used on and in connection with brokerage of energy, namely gas and electricity. Common law rights arising from continuous use in commerce in the U.S. since at least 2005; U.S. Trademark Application Serial No. 85/786,679 pending.

 

SAVE ON ENERGY.COM YOUR CONNECTION TO ENERGY SAVINGS and Design, used on and in connection with brokerage of energy, namely electricity.  U.S. Trademark Reg. No. 3,288,188, and common law rights arising from continuous use in commerce in the U.S. since at least 2005.

 

SAVEONGREENENERGY.COM, used on and in connection with brokerage of energy, namely gas and electricity.  U.S. Trademark Reg. No. 3,690,495, and common law rights arising from continuous use in commerce in the U.S. since at least 2009.

 

SAVE ON GREEN ENERGY.COM and Design, used on and in connection with brokerage of energy, namely gas and electricity.  U.S. Trademark Reg. No. 3,687,337, and common law rights arising from continuous use in commerce in the U.S. since at least 2009.

 

            FACTUAL AND LEGAL GROUNDS

 

This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix). 

 

[a.]      The Domain Name Is Confusingly Similar To Trademarks In Which Complainant Has Rights - UDRP Policy ¶4(a)(i)

 

Complainant Save On Energy, LLC is a limited liability company organized under the laws of Texas.  It is the successor in interest for all purposes relevant to this proceeding to Save On Energy, Ltd., a Texas limited partnership, formerly known as Fusion Energy Group, Ltd.  Complainant Save On Energy, LLC and its predecessors in interest are collectively referred to as “SOE”.

SOE was organized in 2003 to help residential and commercial energy customers take advantage of the competition in energy markets that resulted when states began deregulating electric and natural gas utilities. 

Since at least May 2005, SOE’s primary platform has been a web site (“the SOE Site”)  accessed through the URL <www.SaveOnEnergy.com>. 

SOE created and maintains the SOE Site as an energy marketplace portal promoting energy providers and permitting commercial and residential energy users to compare and solicit competitive energy services pricing from a variety of energy providers.  The key feature of the home page at the SOE Site is a tool that allows residential and commercial energy customers to enter their zip code and click on a button labeled “Get Rates” in order to see “head-to-head comparisons on available energy plans and rates in your area” from the providers that list with SOE. 

SOE markets the SOE Site to companies that supply electricity and natural gas as a means of promoting their energy supply services.  Subscribing companies enter into written agreements with SOE, pursuant to which they receive placement of their logos on the home page of the SOE Site, and pay SOE a fee for customers referred through the SOE Site. 

SOE’s business model has been very successful.  More than 3,000,000 unique visitors have accessed the SOE website since its inception, an average of more than 30,000 unique visitors each month, and over the years numerous energy providers have contracted with SOE to obtain marketing services and promotional placement on the SOE website for their energy products.  Presently a dozen subscriber companies have their logos featured on the SOE Site.

In its early years SOE’s business and marketing focused primarily on the Texas market as one of the earliest states to deregulate energy utilities and foster direct competition at the retail level, but state deregulation and SOE’s operations have expanded to the point where SOE now offers services in sixteen states with respect to electricity, natural gas, or both.

Since inception, the SOE Site has prominently displayed the mark SAVEONENERGY.COM as a symbol of the source of the energy brokerage services available through the SOE Site.  SOE has invested more than US$5,000,000 in advertising and promoting the SAVEONENERGY.COM mark and the SOE Site, including radio and television commercials, print advertising, billboards, sporting and entertainment events sponsorship and signage, and online display advertising through Yahoo and Google.  This activity has extended throughout the sixteen states that SOE currently serves, but has particularly been focused in Texas, which remains SOE’s largest market. 

The SOE Site and the SAVEONENERGY.COM mark have received favorable unsolicited media coverage in the Dallas Morning News, the Houston Business Journal, the Fort Worth Star Telegram, and many other publications. 

As a result of all the foregoing activities, the SAVEONENERGY.COM mark has acquired distinctiveness among actual and prospective customers of SOE’s energy brokerage services, who now recognize the mark as symbolizing the source of the services available through the SOE Site and rely on it to distinguish those services from the services of others.

SOE is the owner of U.S. Trademark Registration No. 3,288,188 for its SAVE ON ENERGY.COM design logo, registered in International Class 36 for use on and in connection with “brokerage of energy, namely electricity.”  The design logo prominently features the words SAVE ON ENERGY.COM, but because application for this registration was filed in 2006, only a year after use of the mark had begun, SOE did not at that time have the five years of continuous use necessary to trigger a presumption of acquired distinctiveness for purposes of registration.  See 15 U.S.C. § 1052(f).  The registration therefore issued with a disclaimer of the words SAVE ON ENERGY.COM apart from the mark as shown.  In view of the eight years of continuous use that have now taken place, and the advertising, promotional activities, internet exposure, and commercial success of the SAVEONENERGY.COM word mark described above, SOE has since applied to register the SAVEONENERGY.COM mark as a standard character mark on the Principal Register, which application is pending and has been approved for publication by the USPTO.

Beginning in 2009, SOE has used the mark SAVEONGREENENERGY.COM on and in connection with an energy marketplace portal accessible on the internet at <www.saveongreenenergy.com>.  The portal is similar to the SOE Site, and uses the same search engine, but emphasizes “green” or environmentally-friendly energy suppliers. 

In 2008, SOE applied to the USPTO to register the word mark SAVEONGREENENERGY.COM for use on and in connection with “brokerage of energy, namely, gas and electricity,” which registration issued in 2009 as U.S. Trademark Reg. No. 3,690,495.  Also in 2008, SOE applied to the USPTO to register a design mark prominently featuring the words SAVE ON GREEN ENERGY.COM for use on and in connection with “brokerage of energy, namely, gas and electricity,” which registration issued in 2009 without any disclaimer as U.S. Trademark Reg. No. 3,687,337.

The domain name that is the subject of this Complaint, <savonenergy.com>, is identical to SOE’s SAVEONENERGY.COM mark except for the omission of a single letter, the letter “e” at the end of the word “save”.^[1]  This omission is insufficient to distinguish the challenged domain name from SOE’s mark.  See, e.g., State Farm v. Try Harder & Co., FA94730 (NAF June 15, 2000) (<statfarm.com> found confusingly similar to the mark STATE FARM despite omission of trailing “e” in first word of complainant’s mark).  Indeed, because the resulting phrase “SavOnEnergy” is nonsensical standing on its own, it is reasonable to infer that the misspelling was intentional in order to create confusing similarity to SOE’s mark.  See, e.g., EducationDynamics, LLC v. Texas International Property Associates, FA0801001139891 (NAF March 18, 2008)(where challenged domain names consisted of “slight misspelling of Complainant’s marks” and otherwise were “nonsensical words,” held that such “intentional misspelling of the marks of another constitutes a situation in which the disputed Domain Names are confusingly similar to Complainant’s marks.”); Victoria’s Secret v. Zuccarini, FA95762 (NAF Nov. 18, 2000) (registering domain name that misspells complainant’s marks “does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks”). 

The <savonenergy.com> domain name is also confusingly similar to SOE’s SAVEONGREENENERGY.COM mark.  “Green” is widely used to refer to the environmental friendliness of products and services, so its presence or absence is not likely to be relied on by the public to distinguish the challenged domain name from SOE’s mark.  See, e.g., AutoZone Parts, Inc. v. Rikhav Infotech Pvt. Ltd., FA1112001418215 (NAF January 11, 2012)(finding that “the addition of the generic term ‘green’” did not distinguish domain name <greenautozone.com> from complainant’s AUTO ZONE mark). 

The <savonenergy.com> domain name is confusingly similar to the SAVEONENERGY.COM and SAVEONGREENENERGY.COM marks in which SOE has both common law and registered rights, and UDRP Policy ¶4(a)(i) is therefore satisfied.

[b.]     Respondent Has No Rights Or Legitimate Interests In Respect Of The Domain Name – UDRP Policy ¶4(a)(ii)

 

[i.]                At the time the original Complaint in this proceeding was filed, the WHOIS database of  Go Daddy Operating Company, LLC listed the registrant of the domain name <savonenergy.com> as Domains By Proxy, LLC.  SOE is informed and believes that Respondent is in the business of providing private or proxy domain name registration services to others, and that Respondent registered the <savonenergy.com> domain name at the request of and for the use and benefit of a principal who was at that point undisclosed.  As of the filing of this Amended Complaint, however, the WHOIS database lists the registrant of the domain name <savonenergy.com> as Respondent Joseph Crono. 

[ii.]              Respondent is not commonly known by the <savonenergy.com> domain name, and does not offer any products or services under that name or any similar name. 

[iii.]             SOE has not licensed, authorized, or permitted Respondent – or any third party, for that matter – to register domain names similar to SOE’s SAVEONENERGY.COM or SAVEONGREENENERGY.COM marks.

[iv.]            The fact that Respondent registered the domain name using a privacy service to conceal his identity is by itself evidence that Respondent has no rights or legitimate interests.  See Virgin Enterprises Limited v. Domain Administrator / Fundacion Private Whois, FA1208001460195 (NAF September 25, 2012)(“Respondent has registered the disputed domain name using a privacy service.  Respondent cannot acquire rights to a disputed domain name in a commercial context in this manner.  The nominee holding bare title is not making a use of the disputed domain.  The beneficial owner (whose identity is not disclosed) cannot acquire any rights because its identity is not disclosed.”).

[v.]              The WHOIS record reflects that the <savonenergy.com> domain name was registered on October 3, 2011, long after commencement of SOE’s use and registration of the SAVEONENERGY.COM and SAVEONGREENENERGY.COM marks.

[vi.]            So far as SOE is aware, the <savonenergy.com> domain name has been used only to automatically redirect internet users to a web page located at <royal3.myambit.com/rates-and-plans> (the “Ambit Page”).  The Ambit Page advertises retail energy rates and plans offered by a company called Ambit Energy based in Dallas, Texas.

[vii.]           Ambit Energy is no stranger to SOE and its business.  In 2008, Ambit Energy purchased a portfolio of retail electric service contracts from another company, Commerce Energy, which had been a subscriber to SOE.  At least two thousand of the contracts acquired by Ambit Energy were generated through the SOE Site.  Thereafter, in September of 2009, Ambit Energy itself entered into a subscriber agreement with SOE for marketing of Ambit Energy’s products and services through the SOE Site.  The contract continued for 22 months, during which time Ambit Energy’s name and logo were featured on the SOE Site and its energy rates and plans were quoted to potential customers visiting the SOE Site.  As a result, at least one thousand commercial and residential customers enrolled for Ambit Energy’s products and services via the SOE Site.

[viii.]         Ambit Energy chose to terminate its subscriber agreement with SOE in July of 2011.  The <savonenergy.com> domain name was registered and began redirecting users to the Ambit Page less than four months later.

[ix.]            The Ambit Page promotes Ambit Energy’s “low, competitive rates,” and, much like the SOE Site, encourages commercial and residential energy customers to “compare for yourself” by entering a zip code and then clicking a large button to see available energy rates.  Users attempting to reach the SOE Site and who click a link to the <savonenergy.com> domain name without noticing the omitted “e”, or who accidentally omit the “e” when typing in the domain name, are highly likely to believe that the Ambit Page is the competitive energy brokerage site they were attempting to reach, or that the Ambit Page is authorized by or affiliated with SOE as the sponsor of that site.  When users enter their zip code and click the “Show Me My Rates” button on the Ambit Page, however, they will only see rates offered by Ambit Energy.

[x.]              The use described above of the <savonenergy.com> domain name cannot give rise to any legitimate rights or interests on the part of any party.  UDRP Panels have consistently held that the intentional registration and use of a domain name consisting of a slight misspelling of the mark of another in order to divert users to a competing business is not a good faith or legitimate use under UDRP Policy ¶4(c)(i), nor is it a legitimate noncommercial or fair use under UDRP Policy ¶4(c)(iii).  See, e.g., EducationDynamics, LLC, supra (when respondent used domain names consisting of “very slight misspellings” of complainant’s mark to resolve to websites offering products and services in competition with those of complainant, held that respondent “is without rights to or legitimate interests in the Domain Names and, in particular, that Respondent’s use of the Domain Names for these websites is not a bona fide offering of goods or services…”); Brooks Brothers Group, Inc., supra (“diverting Internet users to the respondent’s website is not a bona fide offering or a legitimate noncommercial or fair use.”); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA180704 (NAF Sept. 30, 2003)(“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”).

[c.]     The Domain Name Should Be Considered As Having Been Registered And Being Used In Bad Faith – UDRP Policy ¶4(a)(iii)

 

[i.]                The facts recited above are sufficient by themselves to establish that the <savonenergy.com> domain name was registered and is being used in bad faith.  In fact, simply registering a domain name with a privacy service “raises the rebuttable presumption of bad faith registration and use in a commercial context.”  Bedfont Scientific Ltd. v. Innovative Medical Marketing of Virginia, FA1211001470743 (NAF January 2, 2013).  See also Ashley Furniture Industries, Inc. v. Global Access, FA1212001474175 (NAF January 14, 2013)(same).  There are additional facts revealing of bad faith in this case, however. 

[ii.]              Shortly after becoming aware of the <savonenergy.com> domain name, SOE sent an informal email inquiry to Ambit Energy, expecting that the matter could be amicably resolved with its former subscriber.  After several weeks of delay, Ambit Energy sent SOE a letter dated February 20, 2013, that indicated that the <savonenergy.com> domain name was being used “by its consultant,” without naming that person or entity.  Ambit Energy refused to halt the use, and threatened to seek attorneys fee and costs if SOE pursued the matter legally.

[iii.]             The Ambit Page to which users were redirected by the <savonenergy.com> domain name, in its upper right corner under the heading “Your Local Ambit Consultant,” displayed the name “Valerie Crono, Regional Consultant,” with a link to send an email to her at info@needambit.com.  Outside counsel for SOE therefore sent a letter to both Ambit Energy and Ms. Crono on March 13, 2013, explaining why Ambit Energy’s position was legally unsound and requesting that the <savonenergy.com> domain name be transferred to SOE. 

[iv.]            On March 20, 2013, counsel for SOE received a letter from outside counsel for Ambit Energy, stating, “We are investigating your allegations and will respond in due course.”  As of this writing more than a month later, counsel for SOE has received no further communication from Ambit Energy or its counsel of any kind.

[v.]              Meanwhile, because FedEx had been unable to deliver the letter to Ms. Crono, on March 15, 2013, SOE counsel emailed a copy of it to the info@needambit.com email address.  Later that day, counsel for SOE was contacted by telephone by an individual identifying himself as “Joe Crono.”  In subsequent conversations and email exchanges, Mr. Crono indicated that the “Ambit Consultant” referenced on the Ambit Page, Valerie Crono, was his spouse, and that he had registered and was the owner of the <savonenergy.com> domain name.  SOE is informed and believes that this is the same individual who is now listed in the Whois record as the registrant of the <savonenergy.com> domain name, and who is now named as Respondent in this proceeding.

[vi.]            SOE, through counsel, asked Respondent to voluntarily transfer the <savonenergy.com> domain name to SOE.  Respondent declined to do so without compensation.  SOE did not believe compensation was appropriate, but offered to consider paying some amount commensurate with the costs incurred in registering and maintaining the domain name, and asked Respondent to propose a reasonable amount. 

[vii.]           Respondent responded by demanding $3,000.  When counsel for SOE objected that this far exceeded any reasonable registration costs, Respondent sent an email on March 21, 2013, stating in relevant part, “I’m not here to go back and forth with anybody.  Like I said previously I respected their concern and switched the forwarding address and I will put it up forsale [sic] for much more to whomever wants it then they can fight with them.”

[viii.]         Despite the above statement by Respondent about switching the forwarding address, as of March 21 the <savonenergy.com> domain name was still forwarding to the Ambit Page.  At some point thereafter, however, the forwarding ended.  At present the <savonenergy.com> domain name resolves to a page that states, “Welcome to: savonenergy.com.  This Web page is parked for FREE, courtesy of GoDaddy.com.”  The page displays various paid advertisements for energy and energy-savings related products and services.

[ix.]            Further negotiations with Respondent failed to result in any agreement, and as of the time the original Complaint in this proceeding was filed, counsel for SOE had had no communication from him for more than two weeks.

[x.]              The above conduct evidences registration and use in bad faith, as a demand “for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.”  UDRP Policy ¶4(b)(i). See Towmaster, Inc. v. Hale, FA973506 (NAF June 4, 2007) (“Respondent offered to sell the disputed domain name to Complainant for $4,000.  The Panel finds that these offers to sell the disputed domain name constitute bad faith registration and use pursuant to Policy ¶4(b)(i).”).

[xi.]            More broadly, Ambit Energy leveraged SOE’s marketing platform for twenty-two months pursuant to a subscriber agreement with SOE, and benefited throughout that time from the recognition and goodwill embodied in the SAVEONENERGY.COM mark.  Within months after the termination of that relationship, a domain name differing by a single letter was registered by Respondent which immediately began forwarding users to Ambit Energy’s own very similar (and now directly competing) “rate calculator” page, and which listed Respondent’s spouse as “Your Local Ambit Consultant.”  Whether done in concert with Ambit Energy or not, Respondent’s clear purpose was to divert internet users from the SOE Site and thereby provide Ambit Energy with some of the benefit of SOE’s platform without paying for it. 

[xii.]           Such “typosquatting” conduct has repeatedly been held to constitute registration “primarily for the purpose of disrupting the business of a competitor,” UDRP Policy ¶4(b)(iii), as well as “intentionally attempt[ing] to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with” SOE’s marks, UDRP Policy ¶4(b)(iv).  See, e.g., Ashley Furniture Industries, Inc., supra (finding registration and use in bad faith where domain name differed by one letter from complainant’s company name, and redirected users to web sites offering competing products); Brooks Brothers Group, Inc., supra (domain name that “capitalizes on a common typing mistake of Internet users seeking complainant” is “typosquatting” and is “evidence of bad faith registration and use under Policy ¶4(a)(iii)”);  Nextel Communications Inc. v. Geer, FA477183 (NAF July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because it “epitomized typosquatting in its purest form”).

 

B. Respondent

I’ll start off with back in March 6th I received an email from Mr. Enns about my domain name <savonenergy.com>. I immediately called Mr Enns and had a conversations [sic] about such domain name. I was unaware that there was even a company/domain name <savonenergy.com>. I proceed to tell him that i DONOT [sic] use that domain name at all www.needambit.com is our main domain name that is in use and i will take the forwarding address down ASAP which he was pleased to hear and thanked me for doing so. I also had mentioned if his client would like to secure <savonenergy.com> for their own and he said he would bring it to their attention. In the short of things we agreed on a price for transfer and I had told Mr Enns that I wanted the said monies to be made out to a local faith based church directly from his client which was agreed upon.

Within this time Mr. Enns sent contract via email at that time I was on family vacation for about 10 days or so which was explained to Mr.Enns because he was looking to get this done right away on his time table.  It took me a while to get to it to read. I am a Contractor in NJ and since the Super Storm hit here I don't have much free time which was explained to Mr. Enns. After a few emails back and forth and him pressuring me to get the contract back to him ASAP and threatening to go an alternate route and putting time limit as to when i could have the contract back to him. I assured him that i wouldn't go back on my word that this deal would still go through no matter what. This concerned me [sic] so had wanted to get my attorney to look over the contract in case i didn't understand something or was reading it wrong. So as of now there is no deal for purchase for transfer.

As far as the any arbitration on savonenergy the domain name is parked at <godaddy.com> and is not being used and will not be used to resell energy! Any allegations of stealing or infringing on any customers by using <savonenergy.com> form Mr Enns or his clinet [sic] is false!

 

That website was NEVER used to promote any business from [sic], I’ve attached exhibits which clearly show on the 3 most used search engines Google, Bing and Yahoo in both general search and specific search that when you put in "<savonenergy.com> it pulls up a search listing which including "<savonenergy.com> only not <savonenergy.com> so there is no confusion to where people will end up at. "<savonenergy.com> was never in any search engines ever like i said previously in use is <needambit.com>" [sic]

An exhibit which demonstrates the small amount of customers which is held form [sic] needambit .com was provided. These are ALL customers form [sic] family, friends and friends [sic] and family of friends 99% from NJ where we are located. There are no customers we have that we either don't know personally or know the person who knows that person.

In my humble opinion this was an easy thing that would have been taking care of in a simple manner and now its [sic] blown all out of proportion!

 

Someone wants to make billing. [sic]

 

While Respondent offered to transfer the disputed domain name during these proceedings, he never completed the paperwork for the transfer.

 

FINDINGS

(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.

 

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 Complainant to prove the following three elements to obtain an order cancelling or transferring a domain name:

 

(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 claims it has registered trademark rights with the United States Patent & Trademark Office (“USPTO”) for the SAVEONGREENENERGY.COM (Reg. No. 3,690,495 registered on Oct. 22, 2008) and SAVE ON GREEN ENERGY.COM (Reg. No. 3,687,337 registered on Oct. 22, 2008) marks. These trademark registrations sufficiently demonstrate Complainant’s rights in the marks pursuant to Policy ¶4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).

 

Complainant also claims common law rights in the SAVEONENERGY.COM mark, which it uses in connection with the brokerage of gas and electricity. Complainant has used the <saveonenergy.com> domain name since 2005 to promote an energy marketplace portal, allowing energy consumers to compare and solicit competing energy services for the best deal. Complainant has had over 3 million unique visitors access its business website, with more 30,000 visiting the site monthly in recent times. Complainant originally operated exclusively in Texas, but now operates in sixteen different states. Complainant has invested more than $5,000,000.00 in marketing this mark. Complainant has provided an array of marketing materials, advertisements, and news stories which suggest Complainant and its marks are well known in the energy industry. Complainant has adequately established a secondary meaning in its SAVEONENERGY.COM mark dating back its first use in 2005, which further establishes Complainant’s rights to its mark under Policy ¶4(a)(i). See Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”); Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark).

 

Complainant argues the <savonenergy.com> domain name is merely a misspelling of the SAVEONENERGY.COM mark.  The lack of spaces and the addition of a gTLD (or ccTLD) to a domain name must be disregarded for the purposes of a Policy ¶4(a)(i) analysis.  The removal of a single letter “e” is insufficient to distinguish the disputed domain name from Complainant’s mark.  The <savonenergy.com> domain name is confusingly similar to the SAVEONENERGY.COM mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). Therefore, the Panel finds <savonenergy.com> domain name is confusingly similar to the marks under Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied. 

 

Rights or Legitimate Interests

Complainant must first make a prima facie case 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 has rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 (Nat. Arb. 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 claims Respondent was originally listed as “Domains By Proxy, LLC.” Once this proceeding was brought, the “privacy listing” was dropped, revealing “Joe Crono” as the Respondent and registered owner. In either case, Respondent is not commonly known by the <savonenergy.com> domain name. Complainant has not licensed, authorized, or permitted Respondent to register domain names embodying confusingly similar variations of Complainant’s marks. While Respondent’s inarticulate response to this proceeding borders on the illiterate (and is certainly not what one would expect for a resident of New Jersey whose native language is presumably English), Respondent makes no attempt to establish a connection with the domain name.  The Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. 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).

 

Complainant claims Respondent has allowed the <savonenergy.com> domain name to resolve to another domain name affiliated with one of Complainant’s former business partners—Ambit Energy. Ambit Energy terminated a mutual agreement between itself and Complainant in order to directly compete with Complainant. Internet users who enter their ZIP-code into the fields on this domain name’s website are only shown the rates and quotes of Ambit Energy.  

 

There is no doubt Respondent used a privacy service to register the disputed domain name.  This type of scheme prevents the public from knowing who they are dealing with.  The disclosed, legal owner is not the one actually controlling the disputed domain name.  The undisclosed beneficial owner is not associated with the domain name.  Therefore, the undisclosed respondent cannot acquire any rights to the domain name.  It should be noted the beneficial owner apparently registered the disputed domain name for his wife’s benefit as a consultant of Complainant’s competitor.  Neither Respondent nor his wife actually provide any services.  This is neither a Policy ¶4(c)(i) bona fide offering of goods or services, or a Policy ¶4(c)(iii) legitimate noncommercial or fair use of the domain name. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).

 

The Panel finds Policy ¶4(a)(ii) satisfied. 

 

Registration and Use in Bad Faith

Complainant first contacted Ambit Energy in hopes of an amicable resolution. Ambit Energy replied several weeks later informing Complainant that Respondent was a “consultant”.  It is unclear if the consultant was Valerie Crono (who apparently is a consultant with Ambit Energy but isn’t the beneficial owner of the disputed domain name) or Joe Crono (who is the beneficial owner of the domain name but is apparently unrelated to Ambit Energy except through marriage to one of its consultants).

 

Complainant ultimately got in contact with “Joe Crono” who claimed he was the owner of the domain name and demanded $3,000.00 in exchange for its transfer. Respondent acknowledges making this request.  Respondent demanded the funds be paid to a church in New Jersey. The fact the funds were to be paid to a church is of no importance because Respondent made the demand.  The sale price is either (i) a benefit conferred upon the registered owner or (ii) a detriment incurred by the Complainant.  The Panel notes $3,000 clearly exceeds Respondent’s out of pocket costs to register the disputed domain name.  Respondent engaged in Policy ¶4(b)(i) bad faith use and registration in seeking to acquire this domain name in order to extract funds from Complainant—regardless of who ultimately receives this money. See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“[T]he manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name.”); Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).

 

Complainant claims Respondent was using the domain name to send Internet users to Complainant’s competitor, Ambit Energy. Respondent actually knew about Complainant’s mark before registering the disputed domain name on October 3, 2011.  Respondent knew Complainant and Ambit Energy were competitors.  Respondent is the spouse of an independent consultant for Ambit Energy. The <savonenergy.com> domain name originally sent Internet users to websites allowing them to “compare” prices of energy providers who were strictly associated with Ambit Energy. The domain name apparently resolved to a website under an Ambit Energy-affiliate domain name that made explicit and excessive references to Ambit Energy. Respondent’s decision to register a confusingly similar domain name strictly to redirect Internet users to the competing services of Ambit Energy demonstrates Respondent’s Policy ¶4(b)(iv) bad faith use and registration. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).

 

Complainant claims Respondent has now changed the <savonenergy.com> domain name to a parked website for the registrar. Respondent only made this change when it became clear this proceeding would be brought.  Respondent threatened to transfer the disputed domain name so Complainant would be forced to pursue a third party, in the hopes of convincing Complainant of the wisdom of paying the $3,000 “church donation” to get the disputed domain name. The hyperlinks on the parked website direct Internet users to competing energy products and energy service providers. The use of a domain name, even if parked, to prompt Internet users with competing hyperlinks demonstrates Policy ¶4(b)(iv) bad faith use and registration. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

 

Finally, the registration of a domain name with a proxy service in the commercial context raises the rebuttable presumption of bad faith registration and use.  Not only has Respondent failed to rebut this presumption, but Respondent’s actions have reinforced this presumption.  Bad faith registration and use will be found on those grounds alone.

 

The Panel finds Policy ¶4(a)(iii) satisfied. 

 

DECISION

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

 

Accordingly, it is Ordered the <savonenergy.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Monday, June 17, 2013