Energizer Brands, LLC v. sezgin SENER
Claim Number: FA1902001829344
Complainant is Energizer Brands, LLC (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is sezgin SENER (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <energizerturkiye.com>, registered with GoDaddy.com, LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2019; the Forum received payment on February 11, 2019.
On February 11, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <energizerturkiye.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 February 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2019 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@energizerturkiye.com. Also on February 13, 2019, 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 March 6, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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
Since 1955 Complainant, Energizer Brands, LLC, uses its globally famous ENERGIZER mark in connection with batteries and portable flashlights. Complainant has rights in the ENERGIZER mark based on registration with the United States Patent and Trademark Office (“USPTO”), the Turkish Patent and Trademark Office (“TPTO”), and many other trademark offices around the world. Respondent’s <energizerturkiye.com> domain name, registered on April 6, 2015, is confusingly similar to Complainant’s ENERGIZER mark as the domain fully incorporates the mark, merely adding the geographically descriptive term “Turkiye” and generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <energizerturkiye.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ENERGIZER mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to pass itself off as the Complainant in order to sell unauthorized versions of Complainant’s goods.
Respondent registered and is using the <energizerturkiye.com> domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website by passing off as Complainant to sell unauthorized goods. Additionally, Respondent had actual knowledge of Complainant’s rights in the ENERGIZER mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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 on the basis of 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. 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.”).
Complainant claims rights in the ENERGIZER trademark based upon use since 1955 and registration of the mark with the USPTO, the TPTO, and many other national trademark offices. Registration of a mark with a national trademark office is sufficient to establish rights in that mark. 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 Panel therefore holds that Complainant’s registration of the ENERGIZER mark with various government trademark offices is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <energizerturkiye.com> domain name is confusingly similar to the ENERGIZER mark, as the domain fully incorporates the mark, merely adding the geographically descriptive term “Turkiye” and the “.com” gTLD. The addition of geographically descriptive terms and/or a gTLD is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). Respondent added the geographically descriptive term “Turkiye” and the gTLD “.com” to Complainant’s mark when registering the disputed domain name. The Panel agrees that the disputed domain name is confusingly similar to Complainant’s ENERGIZER mark per Policy ¶ 4(a)(i).
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). Should it succeed in that effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <energizerturkiye.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ENERGIZER mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its mark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record for the <energizerturkiye.com> domain name identifies its owner as “sezgin sener” and there is no evidence in the record to indicate that Respondent is known otherwise or was authorized to register a domain name that incorporates Complainant’s mark. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <energizerturkiye.com> domain name.
Complainant further argues that Respondent’s lack of rights and legitimate interests in the <energizerturkiye.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the name resolves to a website which is being used to pass itself off as one of Complainant’s legitimate sites in order to sell unauthorized versions of Complainant’s goods. Use of a domain name to pass oneself off as a complainant to sell unauthorized goods is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Complainant provides screenshots of the webpage associated with the disputed domain name. The site copies the ENERGIZER logo as well as certain product images and other graphics that have been created by the Complainant. This gives the impression that the site either originates with, or has the approval of the Complainant. Further, there is no mention of any relationship (or lack thereof) between the Respondent and the Complainant and so, to the extent that the Respondent is actually offering genuine ENERGIZER branded products, its use of the <energizerturkiye.com> domain name would fail the third element of the well-known Oki Data test (i.e., the site must accurately disclose the registrant's relationship with the trademark owner). Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). The Panel therefore determines that Respondent does not have rights or legitimate interests in the <energizerturkiye.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues Respondent’s bad faith is demonstrated by its actual knowledge of Complainant’s rights in the ENERGIZER mark prior to registering the <energizerturkiye.com> domain name. A respondent’s actual knowledge of a complainant’s rights in a mark prior to registering a disputed domain name may demonstrate bad faith per Policy ¶ 4(a)(iii), and may be inferred through the fame of the mark and the respondent’s use of it. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Based on the extensive use of the ENERGIZER mark to promote batteries on Respondent’s website, Complainant claims that Respondent obviously targeted this famous trademark when it registered the <energizerturkiye.com> domain name. The Panel agrees and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant further argues that Respondent registered and uses the <energizerturkiye.com> domain name in bad faith because Respondent uses the disputed domain name to pass itself off as Complainant to sell unauthorized goods. Use of a domain name to pass oneself off as a complainant in order to sell unauthorized versions of that complainant’s goods may demonstrate bad faith per Policy ¶ 4(b)(iii) or (iv). See CWC Direct LLC v. Ju Yu, FA1501001599464 (Forum Feb. 16, 2015) (“As Respondent is using the disputed domain name to sell counterfeit or unauthorized goods bearing the COLDWATERCREEK mark, the Panel finds evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).”). Complainant provides screenshots of the web pages associated with the disputed domain name to support this contention. As there is no Response or other submission by the Respondent in this case, the Panel accepts the Complainant’s supported and undisputed contention. The Panel therefore finds that Respondent is using the disputed domain name in bad faith per Policy ¶ 4(b)(iii) or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <energizerturkiye.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 8, 2019
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