Energizer Brands, LLC v. Luc Benson / Innovative tech domains
Claim Number: FA1608001689753
Complainant is Energizer Brands, LLC (“Complainant”), represented by John Gary Maynard, Virginia, USA. Respondent is Luc Benson / Innovative tech domains (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <energizerpowerbanks.com>, registered with 1&1 Internet SE.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically August 18, 2016; the Forum received payment August 18, 2016.
On August 23, 2016, 1&1 Internet SE confirmed by e-mail to the Forum that the <energizerpowerbanks.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE verified that Respondent is bound by the 1&1 Internet SE registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 23, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2016, 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@energizerpowerbanks.com. Also on August 23, 2016, 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 September 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in This Proceeding:
Complainant registered its ENERGIZER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,177,083, registered Nov. 10, 1981), and holds rights in the mark that it uses for its world famous battery-related businesses. See Compl., at Attached Ex. A: Attachment 1. Respondent’s domain name <energizerpowerbanks.com> is confusingly similar to Complainant’s mark because it merely adds the descriptive phrase “power banks” (minus the space) and the “.com” generic top-level domain (“gTLD”) to the fully-included ENERGIZER mark.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its ENERGIZER mark in any fashion, and no evidence suggests that Respondent is commonly known by the terms of the disputed domain. Respondent is using the domain name only for the purpose of reselling it for a profit, which is evidenced by the general offer on the resolving website. See Compl., at Attached Ex. C (displaying, “FOR SALE / We are currently selling the domain name [<energizerpowerbanks.com>]”). Such use does not constitute a bona fide offering of goods and services; nor does it constitute a legitimate noncommercial or fair use of the disputed domain name.
Respondent acted in bad faith in registering and passively holdling the domain name in order to sell it. The parked page with a general offer to sell the domain constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(i).
Respondent
Respondent did not respond. The Panel notes that Respondent registered the <energizerpowerbanks.com> domain name December 3, 2015.
Complainant established its rights and legitimate interests in the well-known mark contained entirely within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or domain name.
Respondent registered a domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and inactively held the domain name to sell it, all in 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."
Paragraph 4(a) of the Policy requires Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant asserts rights in the ENERGIZER mark based on its registration with the USPTO (e.g., Reg. No. 1,177,083, registered Nov. 10, 1981). See Compl., at Attached Ex. A: Attachment 1. Registration of a mark with the USPTO confers rights in the mark pursuant to Policy ¶ 4(a)(i). See 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 sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, this Panel finds that Complainant has rights in its ENERGIZER mark.
Complainant asserts that Respondent’s domain is confusingly similar to its ENERGIZER mark. Complainant argues that Respondent merely adds the descriptive words “power banks” to the fully incorporated ENERGIZER mark, plus the “.com” gTLD. Addition of a descriptive term and a gTLD suffix does not distinguish a domain name from the mark opportunistically taken but creates a confusingly similar domain name to a mark in which a complainant had rights. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Thus, this Panel finds that additions of the descriptive phrase “power banks” and the “.com” gTLD suffix do not distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and 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), and then the burden of proof shifts to Respondent to show it does have such 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 asserts that Respondent does not have any rights or legitimate interests in the disputed domain name. Complainant argues that it has never licensed or otherwise authorized Respondent to use its ENERGIZER mark in any fashion. Complainant also contends that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The Panel notes that the WHOIS information for the <energizerpowerbanks.com> domain lists the registrant as “Luc Benson” with “Innovative tech domains” as the organization, and that such information may be used to infer Respondent is not commonly known by the domain name. See Compl., at Attached Ex. B; see also State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Therefore, the Panel uses the WHOIS information and lack of contradicting evidence to find that Respondent is not commonly known by the disputed domain name.
Complainant further alleges that Respondent is not using the disputed domain name to make a bona fide offering of goods and services or a legitimate noncommercial or fair use. Complainant contends that Respondent’s domain name resolves to a parked website having the primary use of selling the domain name. Complainant submitted screen shots from when it visited the <energizerpowerbanks.com> domain name June 1, 2016. See Compl., at Attached Ex. C. Panels have found that such general attempts to sell a domain name do not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Accordingly, the Panel finds that Respondent acted contrary to Policy ¶¶ 4(c)(i) and (iii) and has no rights to nor legitimate interests in the disputed domain name.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Complainant has rights and interests in the mark contained within the disputed domain name and that Respondent has no such rights or interests; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends that Respondent is attempting to sell the disputed domain. See Compl., at Attached Ex. C. A respondent’s willingness to sell a domain is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). For this reason, the Panel finds that Respondent registered and is passively holding and/or “parking” the disputed domain in bad faith pursuant to Policy ¶ 4(b)(i).
Further, this Panel finds that given the worldwide reputation of Complainant and its products, and given Respondent’s attempt to register and “park” while hoping to sell a domain name containing Complainant’s well-known mark, the Panel finds that it is inconceivable that Respondent did not know of Complainant’s rights in this mark. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights and opportunistically attempted to expropriate the goodwill attaching to Complainant’s mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and passively held, or “parked” the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <energizerpowerbanks.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 4, 2016
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