Power Home Remodeling Group LLC formed in 1992 and it registered the mark POWER; the domain PowerHome.com was registered in 2000. They filed a UDRP to get it from its registrant.
The domain was acquired by the Respondent after a private exchange only recently. The WIPO panelist noted that the terms are generic words:
The Panel notes that the words “power” and “home” are dictionary words and that their combination in connection with solar equipment is not surprising. Complainant does not have trademark rights in the POWER HOME combination standing alone and several other parties have also registered the word POWER as a trademark with the USPTO.
Regarding the Complainant’s claim that the Respondent was in breach of an agreement that was in place between them and the domain’s original registrant, the WIPO panelist noted:
The Panel accepts that Respondent, Zhuge Fusheng, registered the domain name recently and possibly received it by way of transfer from Power Home Solar LLC, in breach of that company’s obligations under the Settlement Agreement. However, contrary to the circumstances in Sub-Zero, Inc. v. Alina Kartunova, there is no evidence on the record before the Panel of any relationship or affiliation between Respondent and Power Home Solar LLC such that Respondent should have been aware of the Settlement Agreement when acquiring the domain name nor that Respondent was complicit in its breach.
Final decision: Deny the transfer of the domain PowerHome.com to the Complainant.
The domain transfer was denied.
Copyright © 2024 DomainGang.com · All Rights Reserved.Power Home Remodeling Group, LLC v. Zhuge Fusheng
Claim Number: FA2409002118332
PARTIES
Complainant is Power Home Remodeling Group, LLC (“Complainant”), represented by Christiane S. Campbell of Duane Morris LLP, Pennsylvania, USA. Respondent is Zhuge Fusheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is powerhome.com, registered with GoDaddy.com, 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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on September 30, 2024. Forum received payment on September 30, 2024.
On September 30, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the powerhome.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 October 2, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 2024 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@powerhome.com. Also on October 2, 2024, 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.
An informal Response was received on October 21, 2024.
On October 21, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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.
PARTIES’ CONTENTIONS
A. Complainant
Founded in 1992, Complainant, Power Home Remodeling Group, LLC, is a nationally recognized and innovative home remodeling and solar company in the United States. It provides inter alia window, siding, door, insulation, roofing and solar products, as well as remodeling design and installation services. Complainant has invested considerable effort, time and money in promoting its goods and services under the POWER HOME REMODELING GROUP and POWER marks (“the Power Trademarks”) and in carefully controlling the public’s perception of the nature and quality of the goods associated with those marks. As a result, the Power Trademarks have become an extremely valuable and important asset, representing substantial goodwill. The Power Trademarks are strong, distinctive and well-known marks, and in some cases incontestable. Complainant has rights in the Power Trademarks through registrations with the United States Patent and Trademark Office (“USPTO”). Complainant registered the powerhrg.com domain in November 2010.
Respondent’s powerhome.com domain name is identical to Complainant’s name and well-known Power Trademarks.
Respondent has no rights or legitimate interests in the powerhome.com domain name since Respondent is not permitted to use the name POWERHOME, including as a part of a domain name, is not commonly known by the domain name, and is not using the domain name in connection with a legitimate business interest. Instead, Respondent is using powerhome.com in its domain name to attract and potentially harm existing or potential customers of Complainant.
Respondent’s predecessor was a party in a federal trademark infringement suit filed against it by Complainant and captioned Power Home Remodeling Group, LLC v. Power Home Solar LLC, Case 2:20-cv-02526-MMB (E.D.P.A.). The civil action was dismissed pursuant to a settlement agreement between the parties and made effective as of May 12, 2022. Respondent, Zhuge Fusheng, necessarily recently acquired the domain name from Power Home Solar LLC and is using it in connection with the purported offer and sale of solar related goods and services. Respondent has no affiliation or connection with Complainant and is not authorized to use the domain name powerhome.com or the Power Trademarks. Much of the content of Respondent’s website is identical, or nearly identical, to what was previously online before the Settlement Agreement was signed, and the website references at least one of Power Home Solar’s principals.
Respondent is using the powerhome.com domain name to direct Internet users who mistakenly believe they are visiting a legitimate Complainant affiliated website but instead are visiting a third-party website, which is not affiliated with Complainant. As Complainant is in the home remodeling and solar energy industry, imposter businesses and businesses making factually incorrect claims regarding offered products are of the utmost concern given the public safety implications from the sales of unauthorized or mis-described products.
Further, use of domain name in contradiction of a settlement agreement demonstrates Respondent has no legitimate interests in that domain. See Sub-Zero, Inc. v. Alina Kartunova, FA2407002106542 (Forum Aug. 29, 2024) (“In this case, though, there is the additional impediment to rights or legitimate interests. Respondent’s rebuttal is undercut by the undisputed evidence that its principal entered into a Settlement Agreement in 2021 in connection with subzerorepairnewyorkcity.com that prohibited it from acquiring any domain names or advertising itself with any variant of the Complainant’s mark. Thus, its acquisition of an almost identical domain name, repairsubzeronyc.com on February 17, 2024 undermined its right to hold it. If it had no right it had no legitimate interest in the domain name.”).
Respondent is not and has not been authorized or licensed to use the Power Trademarks. In fact, Complainant, after becoming aware of Respondent’s current use of the powerhome.com domain name in connection with the offer of solar related goods and services, sent a cease-and-desist letter to a representative of Power Home Solar LLC per the notice provisions in the settlement agreement between Complainant and Power Home Solar LLC. The agreement includes terms that prohibit Power Home Solar LLC from using POWERHOME and from using, selling, transferring, or assigning the subject domain to a third party. Based on the fact that the unmasked registrant was identified as an individual, Zhuge Fusheng, and that it recently acquired the domain name from Power Home Solar LLC in violation of the terms of a settlement agreement, Respondent necessarily has no legitimate rights or interests in the powerhome.com domain name under UDRP Policy ¶ 4(a)(ii).
Respondent’s registration and current use of the powerhome.com domain name is in bad faith under UDRP Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). Respondent advertises and purports to sell solar products under the Power Trademarks without authorization to do so and with direct knowledge that it is not authorized to do so, making Respondent a competitor to Complainant who also disrupts Complainant’s business in bad faith.
Upon information and belief, Respondent’s acquisition, use and renewal of the disputed domain name suggest that Respondent has intentionally attempted to attract Internet users, for commercial gain, to the disputed domain name by creating a likelihood of confusion with Complainant’s Power Trademarks. The disputed domain name is identical to Complainant’s Power Trademarks because it contains POWERHOME. On information and belief, Respondent uses this website to phish for consumers’ private data when they try to purchase solar related goods, and Respondent does not appear to legitimately sell or ship any products because it provides no contact information, not even an email address. Consequently, Respondent’s use of the disputed domain name is in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. In its informal Response, Respondent says the powerhome.com domain name was registered on August 10, 2000, much earlier than Complainant’s powerhrg.com domain name on November 3, 2010.
Power and Home are common words. The combination PowerHome has nothing related with Complainant’s POWER trademark, registered in 2019.
The products sold on the powerhome.com website are unrelated to the goods for which Complainant’s trademarks are registered: Insulated glass; Window glass; Non-metal windows; Vinyl windows; Window panes; Window glass; Brick siding components, namely, brick and mortar; Non-metal building products, namely, shutters, shingles, siding, and trim; Vinyl siding; Wood siding; Safety glass for building purposes.
Other companies have registered the POWER trademark much earlier than Complainant, for example: 3261862 Jul. 10, 2007 and 3500053 Sep. 09, 2008.
FINDINGS
Complainant has failed to establish all the elements entitling it to relief.
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 the domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a formal 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 as 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’).
Identical and/or Confusingly Similar
Complainant has not provided evidence to show that, through use, it has acquired common law trademark rights in the Power Trademarks. However, Complainant has shown that it has rights, through registrations with the USPTO, in the trademarks POWER HOME REMODELING GROUP, Reg. No. 4,143,622, registered on May 15, 2012; POWER word and POWER word and design, Reg. Nos. 5,915,141 and 5,915,131, both registered on November 19, 2019; and POWER HOME REMODELING, word and design, Reg. No. 5,903,495, registered on November 5, 2019 (Complaint Annex 4).
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Panel finds Respondent’s powerhome.com domain name to be confusingly similar to each of Complainant’s marks, only differing from Complainant’s POWER marks by the addition of “home” and only differing from Complainant’s POWER HOME REMODELING GROUP and POWER HOME REMODELING marks by the omission of the space and the deletion of the words “remodeling” and “remodeling group”. These differences are insufficient to distinguish the domain name from the marks. The inconsequential “.com” generic top-level domain (“gTLD”) may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel notes that the words “power” and “home” are dictionary words and that their combination in connection with solar equipment is not surprising. Complainant does not have trademark rights in the POWER HOME combination standing alone and several other parties have also registered the word POWER as a trademark with the USPTO.
The powerhome.com domain name was originally registered on August 10, 2000. According to the Complaint, the domain name was registered in the name of Respondent’s predecessor, Power Home Solar LLC and that, pursuant to the settlement agreement in Power Home Remodeling Group, LLC v. Power Home Solar LLC, Case 2:20-cv-02526-MMB (E.D.P.A.) in 2022, Power Home Solar LLC was prohibited from using, selling, transferring, or assigning the powerhome.com domain name to a third party. Hence Complainant contends that Respondent’s use of the domain name in contradiction of the Settlement Agreement demonstrates that Respondent has no legitimate interests in the domain name, citing Sub-Zero, Inc. v. Alina Kartunova, FA2407002106542 (Forum Aug. 29, 2024), in which the respondent’s principal entered into the settlement agreement that was breached by the transfer of the domain name.
The Panel accepts that Respondent, Zhuge Fusheng, registered the domain name recently and possibly received it by way of transfer from Power Home Solar LLC, in breach of that company’s obligations under the Settlement Agreement. However, contrary to the circumstances in Sub-Zero, Inc. v. Alina Kartunova, there is no evidence on the record before the Panel of any relationship or affiliation between Respondent and Power Home Solar LLC such that Respondent should have been aware of the Settlement Agreement when acquiring the domain name nor that Respondent was complicit in its breach.
On August 16, 2024, the powerhome.com domain name resolved to a website prominently displaying the combined words “PowerHome” and promoting for sale solar equipment (Complaint Annex 7). In the absence of any evidence that Respondent was aware of Complainant’s marks or the Settlement Agreement, this indicates that, before any notice to Respondent of the dispute, Respondent used the domain name in connection with a bona fide offering of goods.
Under these circumstances the Panel is not satisfied that Complainant has established a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent.
Complainant has failed to establish this element.
Registration and Use in Bad Faith
In light of the Panel’s finding above, it is unnecessary to consider this element.
DECISION
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the powerhome.com domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: October 23, 2024
