If you register domain names, or buy them in the aftermarket or auctions, make sure they are not infringing on existing trademarks.
In the case of EnergyNova.com, the domain was allowed to expire, was captured by SnapNames a year ago, and it was allegedly resold.
The registrant sought $31,250 dollars for it, but there is a problem: ENERGYNOVA is a registered trademark since 2011.
A UDRP ensued, with Complainant being Mobil in Time Deutschland GmbH of Aach, Germany, that has rights to the ENERGYNOVA mark. They are the former registrant of the domain.
Domains, brands and trademarks. Photo by Amador Loureiro on Unsplash
The Chinese Respondent represented themselves, a bad choice in a case such as this.
They came up with a list of reasons why EnergyNova.com does not infringe on the Complainant’s mark, including how the word is “generic.” This, is not true, and in the end, the sole panelist at the WIPO ordered the domain EnergyNova.com to be transferred to the Complainant.
The Complainant has established it is the owner of the ENERGYNOVA Marks, and it has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name incorporating the ENERGYNOVA Marks. Furthermore, the evidence provided by the Complainant demonstrates that the Disputed Domain Name resolves to pay‑per-click advertising to competitors of the Complainant. Such use demonstrates that the Respondent has used the Disputed Domain Name to derive a commercial benefit. Moreover, the evidence provided by the Complainant indicates that the Disputed Domain Name has been placed on sale on two different websites for amounts of USD 25,000 and USD 31,250, respectively. Therefore, it appears that the Respondent has registered the Disputed Domain Name for sale in excess of documented out-of-pocket costs directly related to the Disputed Domain Name.
Full details on the decision follow:
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mobil in Time Deutschland GmbH v. Yupeng Tang
Case No. D2019-00951. The Parties
The Complainant is Mobil in Time Deutschland GmbH of Aach, Germany, represented by BPM Legal, Germany.
The Respondent is Yupeng Tang of Chongqing, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <energynova.com> (the “Disputed Domain Name”) is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2019. On January 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 17, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 18, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Respondent requested that Chinese be the language of the proceeding on the same day. The Complainant requested that English be the language of the proceeding and submitted an amended Complaint on January 21, 2019.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on January 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2019. The Response was filed with the Center on February 14, 2019.
The Center appointed Peter J. Dernbach as the sole panelist in this matter on February 21, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On February 22, 2019 and March 1, 2019, the Complainant submitted supplemental submissions in reply to the Response. On February 22, 2019 and March 1, 2019, the Respondent submitted two supplemental submissions in reply.
4. Factual Background
The Complainant provides technical solutions in the fields of cooling, heating and steam, and owns the following European Union trademark registrations (hereinafter referred to as the ENERGYNOVA Marks):
No. 010278893 for ENERGYNOVA, registered on March 1, 2012, and
No. 009580358 for ENERGYNOVA, registered on March 30, 2011.
The Complainant registrations cover goods and services in classes 11, 35, 37, 40, and 42.
The Disputed Domain Name was previously registered in the name of the Complainant and associated companies, but was not renewed and, therefore, expired in 2018.
The Disputed Domain Name <energynova.com> was registered by the Respondent on August 18, 2018 and resolves to a pay-per-click website.
5. Parties’ Contentions
A. ComplainantThe Complainant requests that the Disputed Domain Name be transferred to the Complainant based on the following grounds:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Disputed Domain Name fully incorporates the Complainant’s ENERGYNOVA Marks and is identical to such marks. It is well established that the specific Top-Level Domain (“TLD”) is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name
The Complainant asserts that it has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name incorporating the ENERGYNOVA Marks. The website at the Disputed Domain Name is used to earn pay-per-click revenues for redirecting Internet users to competing websites and thus capitalizing on the Complainant’s trademark. In addition, there is also no evidence which suggests that the Respondent is commonly known by the Disputed Domain Name or the name “Energynova”. Thus the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
(iii) The Disputed Domain Name has been registered and is being used in bad faith
The Respondent was aware of the Complainant and its rights in the ENERGYNOVA Marks at the time of the registration of the Disputed Domain Name. The Respondent registered the Disputed Domain Name in order to exploit the Complainant’s longstanding marketing efforts related to the Disputed Domain Name.
The Respondent’s use of the Disputed Domain Name redirects Internet users to a website that provides links to third parties competing websites. By using the website for sponsored links, the Respondent is, in all likelihood, intentionally trying to divert traffic intended for the Complainant’s website to its own for the purpose of earning click-through revenues from Internet users searching for the Complainant’s website. The Respondent’s use of the Disputed Domain Name attempts to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website.
Furthermore, the Respondent offers the Disputed Domain Name for sale on two different websites for amounts of USD 25,000 and USD 31,250, respectively. Such offers to sell a domain name on a public website has been found to indicate that a domain name has primarily been registered with the intention of selling it to the complainant or one of its competitors in return for a payment that exceeds the costs directly related to the domain name.
The Respondent’s registration of the Disputed Domain Name also prevents the Complainant for reflecting its trademark in a corresponding domain name and the Respondent has engaged in a pattern of such conduct.
Therefore, the Disputed Domain Name is registered and is being used in bad faith.
B. Respondent
The Respondent’s contentions may be summarized as follows:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
a. The Respondent alleges that the Complainant does not enjoy trademark rights in the ENERGYNOVA Marks in China or in most countries in the world.
b. The Complainant’s ENERGYNOVA Marks are not famous in China.
c. The Complainant does not broadly use the ENERGYNOVA Marks around the world.
d. There are many domain names containing an “energynova” element. The domain name <energynova.tech> is in use as a website, and this website is unrelated to the Complainant.
e. The “energynova” element is a generic term, and the Complainant does not enjoy prior rights in this term.
f. The fame and influence of the Complainant’s EU marks and its designated goods/services are very low.
g. The Complainant uses “www.mobilintime.com” as its website rather than the Disputed Domain Name.
h. The Complainant held the Disputed Domain Name since 2001. The Disputed Domain Name held by the Complainant redirected to the website “www.mobilintime.com”. The Complainant did not establish a website for the Disputed Doman Name.
i. There is no evidence showing that the Disputed Domain Name was not renewed due to negligence on the part of the Complainant.
j. There is no evidence showing that the Respondent was aware of the Complainant and its rights at the time of the registration of the Disputed Domain Name.
k. No evidence is provided showing that the website at the Disputed Domain Name redirects Internet users to third parties competing websites. The Respondent is not aware of the Complainant.
l. There is no evidence showing that the Disputed Domain Name used by the Respondent attracts traffic intended for the Complainant’s website, or disrupts the Complainant’s business.
m. The Respondent’s acquisition of the Disputed Domain Name is legitimate and occurred after the Complainant gave up the Disputed Domain Name.
n. There is no evidence indicating that the Respondent monitored the Disputed Domain Name and immediately registered same when it became available. Rather, SnapNames first registered the Disputed Domain Name. The Respondent purchased the Disputed Domain Name through a domain reseller. The Complainant took no action to recover the Disputed Domain Name.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Respondent was never in contact with the Complainant, nor has it attempted to misleadingly divert users from the Complainant’s site to the Disputed Domain Name, or disrupt the Complainant’s business. In addition, the Respondent never contacted the Complainant or any third party regarding sale of the Disputed Domain Name. The website at the Disputed Domain Name does not direct or link to the Complainant or third parties competing websites.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
The Respondent claims that it had no knowledge of the Complainant or its ENERGYNOVA trademarks prior to registering the Disputed Domain Name. The Respondent also claims that the Complainant has insufficient rights in ENERGYNOVA marks to make the assertion that the Respondent’s registration of the Disputed Domain Name is in bad faith. In addition, the Complaint abandoned the Disputed Domain Name. Therefore, the Complainant is attempting a Reverse Domain Name Hijacking in abuse of the Policy.
6. Discussion and Findings
6.1 Language of the ProceedingParagraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Rules allow the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008-0293). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states: “[P]anels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the Disputed Domain Name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (See section 4.5 of WIPO Overview 3.0).
The Registration Agreement for the Disputed Domain Name is in Chinese. The Complainant requests the language of the proceeding to be English. The Respondent and the Registrar are located in China. However, given the following factors, the Panel decides that the language of the proceeding shall be English.
(1) The website to which the Disputed Domain Name resolves contains English language content, which suggests that the website is designed to attract Internet users from around the world rather than only Chinese users (Dolce & Gabbana S.r.l. v. Shuangzhi Lee, WIPO Case No. D2013-1103).
(2) The Panel finds that the Complainant is not in a position to conduct this proceeding in Chinese without additional expense and delay due to the need for translation of the Complaint into Chinese.
(3) The Panel notes in any event that the Center instructed the Parties that it would accept Complaint filed in English and the Response filed in English or Chinese and appoint a panelist with capacity in both language if available. The Respondent has filed a substantive Response in Chinese addressing the Complainant’s allegations.
Given these facts, the Panel finds that it is more likely than not that the Respondent has sufficient familiarity with English, and in consideration of the above circumstances and in the interest of fairness to both Parties, the Panel decides, under paragraph 11 of the Rules, that English shall be the language of the proceeding in this case. The Panel accepts the submissions in both English and Chinese.
6.2 Substantive Issues
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that (i) [the disputed domain name] is identical or confusingly similar to a trademark or service mark in which the complainant has rights[.]”
The Complainant has established that it owns the ENERGYNOVA Marks in the European Union.
Since the TLD “.com” is generally disregarded for the purposes of the test of confusing similarity (section 1.11 of WIPO Overview 3.0), the only relevant part of the Disputed Domain Name is the term “energynova”, and it is identical to the word element of the ENERGYNOVA trademark of the Complainant. The Disputed Domain Name, <energynova.com>, incorporates the ENERGYNOVA trademark in its entirety.
The Respondent argues that the ENERGYNOVA Marks are not well-known and that there are no relevant trademark rights registered in China. In addition, the Respondent claims that the goods and services are extremely low-profile and not influential. Under the Policy neither the territoriality principle of the trademarks nor the goods or services for which the mark is registered is relevant for paragraph 4(a)(i) of the Policy. Furthermore, the ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. Also, the goods and/or services for which the mark is registered or used in commerce, the filing/priority date, date of registration, and date of claimed first use, are not considered relevant to the first element test (Assurances Premium SARL v. Whois Privacy Shield Services / Daisuke Yamaguchi, WIPO Case No. D2016-1425).
Having considered the above, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s ENERGYNOVA Marks. The condition of paragraph 4(a)(i) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service provider], in compliance with the Rules of Procedure, that […] (ii) [the respondent has] no rights or legitimate interests in respect of the [disputed] domain name[.]”
Paragraph 4(c) of the Policy sets out the following several circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has established it is the owner of the ENERGYNOVA Marks, and it has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name incorporating the ENERGYNOVA Marks. Furthermore, the evidence provided by the Complainant demonstrates that the Disputed Domain Name resolves to pay‑per-click advertising to competitors of the Complainant. Such use demonstrates that the Respondent has used the Disputed Domain Name to derive a commercial benefit. Moreover, the evidence provided by the Complainant indicates that the Disputed Domain Name has been placed on sale on two different websites for amounts of USD 25,000 and USD 31,250, respectively. Therefore, it appears that the Respondent has registered the Disputed Domain Name for sale in excess of documented out-of-pocket costs directly related to the Disputed Domain Name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The burden of production thus shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name.
The Respondent did not submit any persuasive allegation or evidence indicating any rights or legitimate interests as demonstrated in paragraph 4(c) of the Policy as provided at Section 5 above. The Disputed Domain Name is not used for any bona fide offering of goods or services. The Respondent is not in any way related to the Complainant’s business, is not one of its distributors and the Respondent does not carry out any activity for the Complainant nor does it have any business with it.
Having considered the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that “[a domain-name holder] is required to submit to a mandatory administrative proceeding in the event that [a complainant] asserts to the applicable [administrative-dispute-resolution service providers], in compliance with the Rules of Procedure, that […] (iii) [the respondent’s] domain name has been registered and is being used in bad faith.”
Paragraph 4(b) of the Policy explicitly states, in relevant part, that “the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
The Complainant owns trademark registrations in the European Union. No allegation or evidence suggests that the Respondent selected the ENERGYNOVA Marks as used in the Disputed Domain Name for any reason other than the reputation of the Complainant’s trademark, noting the use to which the Disputed Domain Name had been put. Therefore, the Panel finds that the Respondent was aware of the Complainant’s ENERGYNOVA marks at the time of registration of the Disputed Domain Name and that the Disputed Domain Name was registered in bad faith (Alstom v.Domain Investments LLC, WIPO Case No. D2008-0287).
According to the evidence filed by the Complainant, the website at the Disputed Domain Name directs Internet users to a parking page with competing pay-per-clicks links. It appears that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to other website by creating a likelihood of confusion with the Complainant’s trademark.
In addition, the Disputed Domain Name is for sale on two different websites for amounts of USD 25,000 and USD 31,250 respectively. Under the circumstances of this case, the Panel finds that the Respondent’s offer to sell the Disputed Domain Name for an amount in excess of its out-of-pocket costs is evidence of registration and use of the Disputed Domain Name in bad faith in accordance with paragraph 4(b)(i) of the Policy.
Having considered the above, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and thus the condition of paragraph 4(a)(iii) of the Policy has been fulfilled.
Reverse Domain Name Hijacking (the “RDNH”) is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”. In this case, the Panel concludes there are no grounds for the Respondent’s claim of RDNH.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <energynova.com> be transferred to the Complainant.
Peter J. Dernbach
Sole Panelist
Date: March 6, 2019
