BHE GT&S filed a UDRP to get the domain name Hegts.com from its registrant.
BHE GT&S is a standalone subsidiary of Berkshire Hathaway Energy and is involved in the interstate transmission and storage of natural gas.
Meanwhile, the Respondent has operated a small consulting business in Vancouver, Canada since April 2005. Respondent registered the name HEPTAGON TECHNOLOGY SOLUTIONS as the name of his business on January 1, 2016. In order to create a better presence and gain more business opportunities, he wanted to register a concise and meaningful domain name which relates to business names and hence registered hegts.com on January 4, 2023. Respondent asserts that “heg” is the domain name acronym for Heptagon and “ts” stands for Technology Solutions.
Respondent maintains that he registered the disputed domain name in good faith and denies the allegations set forth in the Complaint. However, not wanting to impact Complainant’s business or reputation, Respondent states that he “consent[s] to the remedy requested by the Complainant and agrees to transfer the domain name to Complainant.”
And now for the cherry on the pie: Despite the Respondent’s agreement to transfer the domain to the Complainant, the Forum panelist denied it:
“In view of the above, the Panel finds that the disputed domain name was not registered and used in bad faith. Respondent presented credible evidence and argument as to the origin of the disputed domain name that refutes any determination thaf [sic] he registered the domain name in bad faith. Further, as determined above, the disputed domain name is not confusingly similar to any trademark rights Complainant may rely upon.”
LOL.
The domain transfer was denied.
BHE GT&S v. SS Ruprai
Claim Number: FA2306002048675
PARTIES
Complainant is BHE GT&S (“Complainant”), represented by Amanda L. DeFord, of McGuireWoods LLP, Virginia, USA. Respondent is SS Ruprai (Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is hegts.com, registered with Google LLC.
PANEL
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.
Jeffrey M. Samuels, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on June 13, 2023; Forum received payment on June 13, 2023.
On June 13, 2023, Google LLC confirmed by e-mail to Forum that the hegts.com domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 16, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2023, 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@hegts.com. Also on June 16, 2023, 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 July 4, 2023.
On July 11, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey M. Samuels, as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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.
Preliminary Issue: Consent to Transfer
The Panel notes that Respondent has agreed to transfer the disputed domain name to Complainant, the very remedy sought by Complainant. In such cases, many UDRP panels have bypassed consideration of the above three elements and simply ordered the transfer of the disputed domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
However, in some cases, despite a respondent’s consent, a panel may, in its discretion, still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include where the respondent has disclaimed any bad faith and where there is question as to whether the complainant possesses relevant trademark rights. See WIPO Jurisprudential Overview 3.0 (hereinafter “WIPO Overview”), ¶4.10. See Research in Motion Ltd. v. Privacy Locked LLC/Nat Collicot, WIPO Case No. 2009-0320. (“Finally, proceeding to a proper consideration of the three elements of paragraph 4(a) of the Policy reduces the risk of an injustice (e.g., the transfer of a domain name to a complainant with no relevant trademark rights”).
The instant Panel, in the exercise of its discretion, determines that, despite Respondent’s consent to transfer, it will proceed to consider the merits of the proceeding. The Panel notes that Respondent, while consenting to transfer, requests the Panel to deny the allegations in the Complaint and asserts that he registered the disputed domain name “in good faith for representation of Respondent’s business in world wide web.”
PARTIES’ CONTENTIONS
A. Complainant
Complainant’s parent, Berkshire Hathaway Energy, is one of the nation’s foremost and leading energy companies, with 24,000 employees, 12 million end-users, and a portfolio of locally managed businesses worth $132.1 billion. Berkshire Hathaway Energy owns U.S. trademark registrations for its BERKSHIRE HATHAWAY (No. 6511524) and BHE (No.6511525) trademarks.
Complainant BHE GT&S is a standalone subsidiary of Berkshire Hathaway Energy and is involved in the interstate transmission and storage of natural gas. Since its creation in 2020, Complainant has owned and used the mark BHE GT&S in connection with its operations. BHE GT&S branded goods/services are currently offered in about ten states. Complainant currently operates over 5,000 miles of transmission lines in the eastern U.S. and more than 750 bcf of total natural gas storage, along with gathering, processing, and field services. Complainant has been the recipient of several awards and has been recognized for numerous environmental achievements.
On May 23, 2023, Complainant filed an application with the United States Patent and Trademark Office (USPTO) to register its BHE GT&S mark.[i] The application alleged a date of first use of December 2020. Complainant owns the domain name BHEGTS.com.
Complainant alleges that it owns common law rights in its BHE GT&S mark as a result of “extensive advertising and promotion of its goods and services under the BHE GT&S Mark, and through favorable industry acceptance and recognition.”
Complainant asserts that the disputed domain name, hegts.com, is virtually identical to the BHE GT&S mark, the only difference being the subtraction of the letter “B” and the “&” symbol.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant indicates that it has never granted Respondent any license or other rights to use its mark; on information and belief maintains that Respondent is not commonly known by any name related to the BHE GT&S mark; and argues that Respondent is not engaged in a bona fide offering of goods or services under, or a fair use of, the disputed domain name. The disputed domain name resolves to a blank website containing an error page stating that “This page isn’t working right now.”
According to Complainant, the disputed domain name has several mail exchanger records affiliated with it, which are associated with phishing schemes and other illegal activity.
With respect to the issue of bad faith registration and use, Complainant alleges that the BHE GT&S mark has no meaning other than as an identifier of Complainant and its goods and services and, thus, “there can be little doubt that Respondent registered the Domain with Complainant, and its marks, squarely in mind.”
Complainant further relies on the fact that the disputed domain name resolves to a blank webpage and is engaged in an act of typosquatting as evidence of the requisite bad faith. Complainant also points to the decision of the UDRP panel in Case No. D2022-3186 to support the assertion that Respondent is a repeat offender of bad faith domain name registration. In that case, the named respondent was found to have engaged in bad faith registration and use through evidence of an intent to engage in phishing schemes, in part because of the domain name’s mail exchanger records.
B. Respondent
Respondent contends that it has run a small legitimate consulting business in Vancouver, Canada since April 2005. Respondent registered the name HEPTAGON TECHNOLOGY SOLUTIONS as the name of his business on January 1, 2016. According to Respondent, “[i]n order to create a better presence and gain more business opportunities, [he] wanted to register a concise and meaningful domain name which relates to business names and hence registered hegts.com on January 4, 2023.” Respondent asserts that “heg” is the domain name acronym for Heptagon and “ts” stands for Technology Solutions.
Respondent maintains that he registered the disputed domain name in good faith and denies the allegations set forth in the Complaint. However, not wanting to impact Complainant’s business or reputation, Respondent states that he “consent[s] to the remedy requested by the Complainant and agrees to transfer the domain name to Complainant.”
FINDINGS
The Panel finds that the disputed domain name is not confusingly similar to the marks in which trademark rights are established; that Respondent has rights or legitimate interests in the disputed domain; and that the disputed domain name was not registered 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 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.
Identical and/or Confusingly Similar
Upon review of the case file, the Panel is not convinced that Complainant has presented sufficient evidence on the issue of whether it has trademark rights in the BHE GT&S mark. As noted above, Complainant filed an application to register such mark with the USPTO but no registration has issued. The mere filing of an application to register a mark does not confer trademark rights under the UDRP. See American Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083. (“Similarly, Complainant’s pending applications do not establish any enforceable rights until registration issues.”).
Complainant asserts, however, that it has common law rights in the BHE GT&S mark. In order to establish common law rights under the UDRP, “the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services…. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.” See WIPO Jurisprudential Overview 3.0, ¶1.3.
In an effort to establish common law rights in the BHE GT&S mark, Complainant points out that it has used the mark since 2020, that its branded goods and services are offered in approximately 10 states, it has more than 1,500 employees, operates over 5,000 miles of transmission lines in the eastern U.S. and more than 750 bcf of total natural gas storage. It also notes that it has received safety awards from the American Gas Association, received numerous environmental awards, and has a long history of community investment.
There is no evidence of amount of sales or of the nature and extent of advertising. Nor is the Panel presented with any context by which it can judge the significance, if any, of the fact that Complainant operates over 5,000 miles of transmission lines and operates over 750 bcf of natural gas storage to the issue of secondary meaning of the BHE GT&S mark. While there is some evidence of industry recognition, in the Panel’s view, the allegations in the Complaint fall short of establishing common law rights in the BHE GT&S mark.
While the evidence does not support a finding that Complainant has common law rights in the BHE GT&S mark, the evidence does support a finding that Berkshire Hathaway Energy, Complainant’s parent company, through its ownership of U.S. trademark registrations, has trademark rights in the BERKSHIRE HATHAWAY ENERGY and BHE marks.
While it is clear that not only a mark owner may have sufficient rights in a mark to maintain a Policy proceeding, little case law focuses on the issue presented here: whether a standalone subsidiary may do so when the parent holds the trademarks. The limited precedent that exists indicates that it may, either under a theory of implied license, see DigiPoll Ltd. v. Raj Kumar, WIPO Case No. D2004-0939, or a more general notion based on corporate control and common sense. As stated in Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796, “It has been accepted in several decisions that a company related as subsidiary or parent to the registered holder of a mark may be considered to have rights in the mark. See for example Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756 where Complainant’s grand-parent corporation had a long established U.S. trademark registration for the mark for vacuum cleaners.” See BSH Home Appliances Corp. v. Michael Stanley/Michael Sipo, WIPO Case No. D2014-1433.
While the Panel finds that Complainant may rely on its parent’s trademark rights, it notes that such rights extend only to the BERKSHIRE HATHAWAY ENERGY and BHE marks. Thus, the determination of the identical or confusingly similar element of the Policy must be based on a comparison of the disputed domain name with these marks.
There is no doubt that the disputed domain name is neither identical nor confusingly similar to the BERKSHIRE HATHAWAY ENERGY mark. And, while the disputed domain name shares some of the same literal elements as the BHE mark, the Panel concludes that the BHE mark is not clearly recognizable within the disputed domain name. Significantly, the disputed domain name does not include the first letter found in the BHE mark and includes several additional letters. Thus, this is hardly a case of typosquatting.
Rights or Legitimate Interests
The Panel concludes that Respondent has established rights or legitimate interests in the disputed domain name.
Respondent submitted a statement of registration of its business name “Heptagon Technology Solutions” with the British Columbia Registry Services and that the Registry filed and registered the name on March 15, 2016. The statement of registration indicates that Respondent’s start date of its business was January 1, 2016. The nature of the business is identified as “computer systems design and related services.” See Response, Annex B.
Respondent, in his Response, also presented a reasonable explanation and proof as to the origin of his hegts.com domain name; that is, that “heg” is an acronym for “Heptagon” and that “ts” stands for “Technology Solutions.”
Registration and Use in Bad Faith
In view of the above, the Panel finds that the disputed domain name was not registered and used in bad faith. Respondent presented credible evidence and argument as to the origin of the disputed domain name that refutes any determination thaf he registered the domain name in bad faith. Further, as determined above, the disputed domain name is not confusingly similar to any trademark rights Complainant may rely upon.
The Panel reviewed the UDRP decision in WIPO Case No. D2022-3186, which Complainant relies upon, in part, to establish bad faith. The respondent in that case has the same Contact Privacy Inc. Customer Number as the respondent in this matter – 7151571251. However, the captioned respondent in Case No. D2022-3186 is April Lewzader. The captioned Respondent in this matter is SS Ruprai. No explanation is provided as to the relationship, if any, between the respondents. In any case, the Panel is not convinced that the evidence and argument advanced by Complainant, when weighed against the evidence presented by Respondent, supports a determination that Respondent, in registering the disputed domain name, targeted Complainant or its parent company.
DECISIONHaving failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the hegts.com domain name REMAIN WITH Respondent.
Jeffrey M. Samuels, Panelist
Dated: July 25, 2023
[i] The records of the USPTO indicate that the application has not yet undergone examination to determine its registrability.
