Enphase Energy, Inc. v. TECDIVING Sp. z o.o.
Claim Number: FA2206002001039
Complainant is Enphase Energy, Inc. (“Complainant”), represented by Charles P. Guarino of Moser Taboada, New Jersey, USA. Respondent is TECDIVING Sp. z o.o. (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <enphase.store>, <enphase.global>, and <enphase.online>, registered with Domain.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 20, 2022; the Forum received payment on June 20, 2022.
On June 21, 2022, Domain.com, LLC confirmed by e-mail to the Forum that the <enphase.store>, <enphase.global>, and <enphase.online> domain names are registered with Domain.com, LLC and that Respondent is the current registrant of the names. Domain.com, LLC has verified that Respondent is bound by the Domain.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 June 21, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2022 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@enphase.store, postmaster@enphase.global, postmaster@enphase.online. Also on June 21, 2022, 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 12, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Enphase Energy, Inc., operates a energy technology company specializing in solar generation, energy storage, and monitor and control systems for residential and commercial customers around the world.
Complainant has rights in the ENPHASE mark through registration with various national and international trademark agencies, including the United States Patent and Trademark Office (“USPTO”).
Respondent’s <enphase.store>, <enphase.global>, and <enphase.online> domain names are identical or confusingly similar to Complainant’s ENPHASE mark, incorporating Complainant’s entire mark and merely adding one of the “.store,” “.global,” or “.online” generic top-level domains (“gTLDs”).
Respondent lacks rights and legitimate interests in the <enphase.store>, <enphase.global>, and <enphase.online> domain names as it is not commonly known by any of the at-issue domain names and is neither an authorized user nor licensee of the ENPHASE mark. Additionally, Respondent does not use the domain names for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent resolves each of the at-issue domain names to a parked website offering the at-issue domain names for sale.
Respondent registered and uses the <enphase.store>, <enphase.global>, and <enphase.online> domain names in bad faith. Respondent’s is offering the domain names for sale and Respondent further attempts to profit from the confusion between the domain names and Complainant’s mark thereby showing bad faith attraction for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ENPHASE trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the ENPHASE trademark.
Respondent uses the at-issue domain names to address a parked website offering the at-issue domain names for sale.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain names are each confusingly similar or identical to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration along with multiple other national trademark registrations for its ENPHASE trademark. Any of such registrations is sufficient to demonstrate Complainant’s rights in the ENPHASE mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
Respondent’s <enphase.store>, <enphase.global>, and <enphase.online> domain names each contain Complainant’s ENPHASE trademark followed by a suggestive top-level domain name either “.store,” “.global” or “.online.” The differences between each at-issue domain name and Complainant’s ENPHASE trademark are insufficient to distinguish any of the at-issue domain names from ENPHASE for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <enphase.store>, <enphase.global>, and <enphase.online> domain names are each confusingly similar to Complainant’s ENPHASE trademark. See Bittrex, Inc. v. Privacy protection service - whoisproxy.ru, FA 1759828 (Forum Jan. 12, 2018) (“The Panel here finds that the <bittrex.market> domain name is identical to the BITTREX mark under Policy ¶4(a)(i).”); see also Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any at‑issue domain name.
The WHOIS information for the at-issue domain names identifies their registrant as “TECDIVING Sp. z o.o” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by any of the at-issue domain names or by ENPHASE. The Panel therefore concludes that Respondent is not commonly known by any of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent’s at-issue domain names address a parked website that offers the three at-issue domain names for sale. Respondent’s use of the domain names in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”); see also, Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the at-issue domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <enphase.store>, <enphase.global>, and <enphase.online> domain names were each registered and used in bad faith. As discussed below without limitation, circumstance are present which allow the Panel to conclude that Respondent acted in bad faith regarding each at-issue domain name, pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding rights or legitimate interests, Respondent offers <enphase.store>, <enphase.global>, and <enphase.online> for sale. Presumably, the amount Respondent will accept for any of its at-issue domain names is in an amount in excess of its reasonable costs. Respondent’s use of the confusingly similar or identical domain names to offer them for sale demonstrates Respondent’s bad faith under Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”); see also Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”).
Moreover, Respondent’s intent to capitalize on the confusion it in fact created between the at-issue domain names and Complainant’s trademark displays bad faith attraction for commercial gain thus further indicating Respondent’s bad faith registration and use of the at-issue domain names under Policy ¶ 4(b)(iv). See Starbucks Coffe Co. d/b/a Starbucks Coffee Company v. Carl Knight, FA1304001494398 (Forum May 20, 2013) (“The Panel concludes that Respondent’s actions cause consumer confusion and attract Internet users to its websites in order to make a financial gain which is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(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 <enphase.store>, <enphase.global>, and <enphase.online> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 13, 2022
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