WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stuart Energy Systems Corporation and Hydrogenics Corporation v. Alexander Morozov
Case No. D2006-1533
1. The Parties
The Complainants are Stuart Energy Systems Corporation, Mississauga, Ontario, Canada and Hydrogenics Corporation, Mississauga, Canada, represented by Bereskin & Parr, United States of America.
The Respondent is Alexander Morozov, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December�1,�2006. On December�7,�2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On December�7,�2006, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December�19,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January�8,�2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January�10,�2007.
The Center appointed David Perkins as the sole panelist in this matter on January�17,�2007. 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
4.A The Complaint
4.A.1 The Complainants are Stuart Energy Systems Corporation [Stuart Energy] and Hydrogenics Corporation [Hydrogenics]. Stuart Energy is a subsidiary of Hydrogenics, which acquired Stuart Energy in 2005. Stuart Energy was formed in 1948 and developed a line of hydrogen generation products based on alkaline electrolyte technology. Hydrogenics was formed in 1995. The parent and subsidiary characterize themselves as a leading global developer of clean energy solutions, with a diversified product portfolio of fuel cell power products, hydrogen generation systems and fuel cell test stations.
4.A.2 The STUART Registered Trademarks
Stuart Energy is the registered proprietor of U.S. trademark 2,894,058 for the word STUART in international classes 7, 9,17, 21, 36 and 41. The application was filed on August 14, 2000 and registered on October�19,�2004.
4.A.3 Stuart Energy is also the registered proprietor of Canadian trademark No. 575,036 STUART in Classes 1, 4, 6, 7, 11, 16, 17, 21, 35 – 38 and 41 – 42. First use of the STUART trademark is claimed from 1949 on products and from November 1997 in relation to services.
4.A.4 The STUART ENERGY Trademarks
The STUART ENERGY trademark comprises both the word mark and a stylized mark where the two words are combined in juxtaposition with a globe device. Representation of both marked are set out below.
4.A.5 The Complainants say that the STUART ENERGY business name and mark have been used in Canada, the United States of America, Europe and Asia since 1997 in association primarily with products comprising:
- hydrogen generators, generation equipment and electricity regeneration products that interface directly, indirectly, ongrid or offgrid with renewable power sources;
- hydrogen storage products;
- hydrogen refuellers;
and services relating to:
- the design, test, manufacture, assembly, integration, installation, control, maintenance, service, repair, sale, distribution and/or finance of the above products; and
- related research and development and consulting services.
4.A.6 The Complaint exhibits material describing the history of Stuart Energy and illustrating use of the STUART ENERGY stylized trademark on products and signage. The Complaint also exhibits the Hydrogenics Annual Reports for 2004 and 2005, which record annual revenue of US$26.7 million (2003); US$16.7 million (2004) and US$37.2 million (2005).
The STUART ENERGY domain name
4.A.7 The Stuart Energy domain name was originally registered by Stuart Energy in 2000 and used in relation to its website. Since the acquisition of Stuart Energy by Hydrogenics in 2005, the Stuart Energy domain name has resolved to the Hydrogenics website. The Complaint exhibits archived print outs from the Stuart Energy website at various dates prior to 2005 showing use of the domain.
4.A.8 The Complainants say that by clerical oversight, the Stuart Energy domain name was allowed to lapse. However, when – having recognized this oversight – the Complainants attempted to renew that domain name, they found that it had in the meantime been registered by the Respondent.
4.B The Respondent
4.B.1 Having failed to file a Response, what is known about the Respondent is set out in the Complaint and certain exhibits to the Complaint, as well as information provided by the Registrar.
4.B.2 The Respondent used the Private Registration Service provided by Network Solutions, with the result that initially the only contacts for the Respondent were the Hendon, Virginia, United States of America address of Network Solutions and an email address . Networtksolutions subsequently revealed that the Respondent’s contact information, including a physical address in New York city and an alternate email address. This additional contact information was used by the Center in its communications with the Respondent.
4.B.3 When the Complainants sought to access the domain name in issue on September�20,�2006, it was found to be inactive and resolved to a default page. Hence, there is no evidence of use by the Respondent of the domain name in issue.
4.B.4 However, the Network Solutions WHOIS registration profile for the domain name in issue produces the following information on the Respondent’s Website Title, Meta Description and Meta Keywords:
- Website Title: Free porn group sex, nude teens, lesbian sex
- Meta Description: the same
- Meta Keywords: the same
The Keywords indicate that the Respondent need only activate the domain name in issue and it will immediately resolve to a pornographic website.
4.B.5 The Complaint exhibits evidence which indicates that the Respondent, who would appear to operate under one or more pseudonyms, uses a technique called “trackback spam”. This technique relies on Internet domain registrations to traffic spam to blog sites or individual email addresses with pornographic advertisements.
4.B.6 Using the WHOIS lookup service, from results exhibited to the Complaint, the Respondent can be seen to be the registrant of a number of pornographic and obscene domain names. These include:
4.B.7 The Complaint also exhibits evidence that the Respondent is the registrant of domain names incorporating well-known third party trademarks and that those domain names resolve to pornographic websites. These include:
5. Parties’ Contentions
5.A. Complainant
5.A.1 The Complainants assert trademark rights in the words Stuart Energy through (1) the registered STUART trademark of Stuart Energy, (2) prior use of the domain name and (3) use of the common law trademark STUART ENERGY in both the plain words and the stylised forms illustrated in paragraph 4.A.4 above.
5.A.2 As to the requirements of paragraph 4(a)(i) of the Policy, the Complainants’ case is that the registered STUART trademark incorporates the first and dominant element of the domain name in issue. Accordingly, the Complainants contend, there is confusing similarity.
5.A.3 Further, the Complainants contend that the domain name is identical to the Complainants’ common law trademark STUART ENERGY.
5.A.4 As to the second requirement, paragraph 4(a)(ii) of the Policy, the Complainants contend that there is no evidence that the Respondent can bring himself within any of the circumstances in paragraph 4(c) of the Policy. In addition, the Complainants say that the STUART ENERGY business and mark is so well known internationally that the Respondent must have been aware of their trademark rights when he registered the domain name in issue
5.A.5 Further, the Complainants contend that there has been no bona fide or other legitimate use of the domain name in issue: see, paragraph 4.B.3 above. In that connection, the Complainants rely on the Panel’s finding in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, that on the facts of the case there was no “plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate”. Likewise, the Complainants contend that this is borne out here by the Respondent’s obvious intention to use the domain name in issue for a pornographic website: see, paragraphs 4.B.4 to 4.B.6 above.
5.A.6 As to the third requirement, paragraph 4(a)(iii) of the Policy, the Complainants state that the circumstances set out in paragraphs 4(b)(ii) to (iv) of the Policy have been met by the evidence in this case: First, the Respondent’s registration of the domain name in issue is clearly aimed at preventing the Complainants from using the STUART and STUART ENERGY trademarks in the domain name they previously used (prior to the clerical oversight in 2005 when was allowed to lapse). The Complainants point in this connection to the Respondent’s previous pattern of registering domain names incorporating well-known third party trademarks: see, paragraph 4.B.7 above.
5.A.7 The Complainants contend that it is plainly disruptive of the Complainants’ business to be precluded from maintaining an online presence in relation to the domain name as it had done between 2000 and 2005.
5.A.8 As to bad faith registration, the Complainants also refer to the Respondent’s failure to respond to the cease and desist letter from their solicitors dated January�29,�2006. The Respondent’s registration of the domain name in issue is also, they say, quite plainly opportunistic.
5.A.9 Finally, the Complainants rely on decisions under the Policy where intention to use the domain name in issue for a pornographic website has been held to constitute use in bad faith. The decisions cited are Bass Hotels & Resorts Inc. v. Mike Rodgerall, WIPO Case No. D2000-0568; SFR .v. DLI Dale Miller WIPO Case No. D2002-0425; and Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055.
5.B. Respondent
As noted, no Response has been filed.
6. Discussion and Findings
6.1 Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
- that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- that the Respondent has no rights or legitimate interests in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
6.2 Paragraph 4(c) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.
6.3 Paragraph 4(b) of the Policy sets out circumstances which, again 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.
A. Identical or Confusingly Similar
6.4 The Complainant, Stuart Energy, is the registered proprietor of the STUART trademark. The Panel is satisfied that Stuart Energy has, for at least the last 10 years, used the STUART ENERGY unregistered trademark and has over that time acquired common law trademark rights in those words.
6.5 The domain name in issue is identical to the STUART ENERGY trademarks and is also confusingly similar to the STUART trademark, “Stuart” being the dominant feature of the domain name. Accordingly, the Complainants succeed in establishing the first requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 The Complainants have not licensed or otherwise authorised use by the Respondent of the STUART and/or STUART ENERGY trademarks. There is no evidence that, had he filed a Response, the Respondent could have established any of the circumstances of paragraph 4(c) of the Policy or any other circumstances indicating rights or legitimate interests. Indeed, the circumstances are, in the Panel’s opinion, against such a possibility. The Panel accepts the Complainants’ contention that the Respondent’s registration of the domain name in issue was opportunistic: the Respondent registered the domain name when the Complainants omitted by oversight to renew the domain name which had been used by Stuart Energy in connection with its website for almost a decade. The only evidence of the Respondent’s intended use of the domain name is as a link to pornographic websites. That is not a legitimate use of the domain name that incorporates the Complainants’ trademarks and it will clearly damage the Complainants’ goodwill. Accordingly, the Panel is satisfied that the Complainants have demonstrated that the Respondent has no rights or legitimate interest in respect of the domain name in accordance with paragraph 4(a)(iii) of the Policy.
C. Registered and Used in Bad Faith
6.7 The Panel is satisfied that the Complainants have established the circumstances of bad faith registration and use set out in paragraphs 4(b)(ii) to (iv) of the Policy. In addition, the cases relied upon by the Complainant – see, paragraphs 5.A.5 and 5.A.9 above – are also directly in point to the facts of the present case as the evidence suggests that the Respondent intends to use the domain name in connection with a pornographic website. The Panel also notes that, whatever the site may or may not have been intended for, it has not been used. In the absence of use or an offering for sale of the domain name, there is sufficient evidence of bad faith registration and use by means of passive holding. The third element of the Policy may be satisfied when – as is the case here – the domain name incorporates a well-known trademark, there is no Response filed, the Registrant has taken steps to conceal its identity, and no good faith use of the domain names is conceivable. (See Telstra Corporation Li�ited v. Nuclear Marshmallows, WIPO Case D2000-0003.) In the circumstances, the Panel finds that the Complainant meets the twin requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant, Hydrogenics Corporation, as required by the Complainants.
David Perkins
Sole Panelist
Dated: January 31, 2007
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