WIPO Domain Name Decision D2019-1942 for ienova.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Infraestructura Energetica Nova, S.A.B. de C.V. v. Danny Sullivan Case No. D2019-1942 1. The Parties
The Complainant is Infraestructura Energetica Nova, S.A.B. de C.V., Mexico, represented by Alejandro Díaz Morales, Mexico.
The Respondent is Danny Sullivan, United States of America (“United States”), self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2019. On August 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name.
The Center verified that the 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 of the Complaint, and the proceedings commenced on August 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2019. The Response was filed with the Center on September 5, 2019.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on September 13, 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. 4. Factual Background
The Complainant has registered the trademark IENOVA as such in Mexico: Registration No. 1498101 in class 41 granted on December 1, 2014; Registration No. 1596328 in class 4 granted on December 12, 2015; Registration No. 1648153 in class 4 for granted on June 21, 2016; Registration No. 1749939 IENOVA in class 35 granted on April 28, 2017. The Complainant also owns a number of compound trademarks registered in Mexico for short phrases including the term IENOVA, such as IENOVA ENERGÍA PARA MÉXICO; IENOVA GASODUCTOS; and IENOVA INFRAESTRUCTURA ENERGÉTICA UNA EMPRESA DE SEMPRA ENERGÍA PARA MÉXICO. The Complainant has not registered the IENOVA trademark outside Mexico.
The disputed domain name was registered by the Respondent on October 31, 2018.
The Respondent has offered the disputed domain name for sale on a website hosted by “” for the sum of USD 5,000. The Respondent claims to be a domain name trader and entitled to offer domain names for sale. 5. Parties’ Contentions A. Complainant
The Complainant maintains that the disputed domain name is identical to its IENOVA trademark. Further, the Complainant says that the Respondent has no trademark rights to IENOVA, something that would be impossible in any case since only the Complainant has such rights, as attested to by its registration of IENOVA trademarks in Mexico. The Complainant affirms that it is recognized in the United States and Latin America as one of the most important companies in the energy sector in Mexico. The Complainant asserts that the Respondent is not known by the name IENOVA in the energy industry and can never become known as such because of the recognition attaching to the Complainant’s trademark in Mexico, Latin America and the United States. The Complainant has used its company name since 1996 and its IENOVA trademark since 2014. It is listed on the Mexican stock exchange by reference to the name IENOVA.
The Complainant points out that the date of registration of the disputed domain name is 22 years after the Complainant company’s incorporation in Mexico, 4 years after its relevant trademark registration and 5 years after the registration of the Complainant’s main domain name . In the circumstances, the Respondent registered the disputed domain name with knowledge of the Complainant’s registered trademarks, or so the Complainant contends.
The Respondent has never been authorized or licensed by the Complainant to use IENOVA in any manner whatsoever. The Respondent is also said not to have any rights or legitimate interests because all he does with the disputed domain name, is offer it for sale on a website which an Internet user will arrive at if the disputed domain name is used. The Complainant also points out that the disputed domain name is not a generic term, a surname or a non-distinctive word, but a distinctive, registered and recognized trademark: when “ienova” is entered in a Google search engine, the only results are said to relate to the Complainant’s trademark and activities. The real reason that the Respondent registered the disputed domain name is no coincidence, according to the Complainant, but the fact that he knew of its reputation and intended to derive a profit from it.
The Complainant also points out that the registration of a domain name identical or confusingly similar to a trademark, manifests a bad faith registration according to the UDRP Policy. The registration of a well-known company name or trademark is said in and of itself to indicate bad faith. The Respondent is also preventing the Complainant as registered owner, from reflecting its trademark in the disputed domain name itself. The Respondent is not even using the domain name with a real purpose; he is only occupying it to prevent the Complainant from having a website to offer its services to a broader audience. All these circumstances point to the Respondent having registered the disputed domain name in a deliberate manner. According to the Complainant, the Respondent knows that he should be careful not to adversely affect third parties’ trademark rights in registering a domain name. His only purpose was to sell the disputed domain name for a high price which he seeks to command due to the economic position of the trademark owner – offering to sell at above out-of-pocket costs as has occurred here is indicative of bad faith.
The Complainant further alleges that the Respondent has registered and is using the disputed domain name in bad faith because he engaged in a pattern of registering domains related to trademarks, alongside his activity of buying generic and surname domains. Nevertheless, the Complainant says that it has found that the Respondent is not only a generic domain names seller but also a possible cybersquatter, with around 15,901 domain names registered on his behalf of which several are related to trademarks, public persons, and even characters names without having authorization or legitimation. The Complainant lists about 15 such domain names including and and others which incorporate easily recognized trademarks. The Respondent although, as the Complainant accepts, is a renowned generic domain names investor which is a legitimate business, has engaged in a pattern of abusive registrations of numerous domains related to trademarks, such as in the present case, which is not the first time that he has registered and used a domain name in bad faith. It is clear that the disputed domain name was registered and is also being used in bad faith, because the Respondent knew about the Complainant’s trademarks and registered the disputed domain name to obtain an undue profit by selling it at above out-of-pocket cost. Additionally, the Respondent is said to be using the disputed domain name in bad faith, because he is preventing the Complainant from reflecting the trademark in its own domain name.
Finally, the Complainant says that it is necessary to invoke the Passive Holding Doctrine, developed since Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. B. Respondent
The Respondent says he is a domain name