WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Xnergy v. Advanced Consulting DBA
Case No. D2007-0012
1. The Parties
The Complainant is Xnergy, Carlsbad, California, United States of America, represented by Jeff Gosseling, United States of America.
The Respondent is Advanced Consulting DBA, Spring Valley, California, United States of America, represented by Lance McCormick, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January�4,�2007. On January�5,�2007, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On January�5,�2007, Tucows 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 and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January�23,�2007. The Center verified that the Complaint together with the amendment to 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 January�30,�2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February�19,�2007. The Response was filed with the Center on February�16,�2007.
The Center appointed William R. Towns as the sole panelist in this matter on March�6,�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
The Complainant is a mechanical engineering and construction management company providing services to the biotech, medical devices and semi-conductor industries. The Complainant holds a federal registration for the mark XNERGY, issued by the United States Patent and Trademark Office (USPTO) on May�24,�2005. The Complainant has used the XNERGY mark in commerce since as early as October�2,�2001. The Complainant has registered the domain name , which directs internet users to the Complainant’s commercial website.
The Respondent is a computer and internet service company offering, among other things, web design and development services. At one point, the Respondent had been hired by the Complainant to provide design services for the Complainant’s website. Subsequently, when the domain name became available, the Respondent registered the domain name. The Respondent has made no active use of the disputed domain name since its registration.
5. Parties’ Contentions
A. Complainant
The Complainant is the owner of the federally registered mark XNERGY. According to the Complainant, the Respondent was contracted to design a web site for the Complainant’s business, which included obtaining the disputed domain name for use with that website. The Complainant maintains that the Respondent was terminated after failing to complete the work in a satisfactory manner, and thereafter refused to transfer the disputed domain name to the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in the domain name because the Respondent has not been known by the domain name, and has made no use of the domain name other than to resolve to the Complainant’s website while that site was under construction. Based on all of the foregoing, the Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
The Respondent denies any bad faith registration and use of the disputed domain name. According to the Respondent, the Complainant’s mark, XNERGY, is a common word, and one that has been used by an investment firm, a radio station, and in connection with a pornographic website. The Respondent concedes being hired by the Complainant to develop the Complainant’s “www.” website, but the Respondent contends that it was free to register the disputed domain name once the domain name became available.1
The Respondent concedes that it has not actively used the disputed domain name but is developing ideas for a prospective use, which the Respondent does not want to make public at this time. The Respondent argues that “bad faith” under the Policy equates to extortion or intentional disruption of another’s business, which the Respondent maintains the Complainant cannot prove, since the Respondent intends to use the disputed domain name for its legitimate interests.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No.�D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No.�D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs�169 and 170. Paragraph�15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph�4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph�4(i).
Paragraph�4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph�4(c) of the Policy in turn identifies three non-exhaustive means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph�4(a) of the Policy, a number of panels have concluded that paragraph�4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No.�D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical and confusingly similar to the Complainant’s registered XNERGY mark. The Complainant beyond question has established rights in its mark through registration and use. At a minimum, the Complainant’s marks are entitled to a presumption of validity by virtue of their registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.
The Respondent asserts no confusion should be found because “xnergy” is a common word that Complainant has no right to monopolize. The Respondent, however, has provided no substantiation for this claim,2 and there is no evidence in the record from which this Panel conceivably could reach such a conclusion. Further, under paragraph 4(a)(i) of the Policy, the question of identity or confusing similarity is evaluated based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Thus, the Panel compares the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoS, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Caf�, WIPO Case No. D2000-0068.
Accordingly, the Panel finds that the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant without question has established rights in the XNERGY mark through registration and use. The Respondent has made no claim to have been commonly known by the disputed domain name, which is identical to the Complainant’s mark. Nor does the Respondent claim to have made any noncommercial or fair use of the domain name. In addition, the record does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with any bona fide offering of goods or services prior to the commencement of this administrative proceeding. Although the Respondent asserts that a prospective use of the domain name is being considered, no supporting material or information regarding the nature of any such prospective use has been provided.
Given the foregoing, the Panel finds that the Complainant has made a prima facie showing under paragraph�4(a)(ii) of the Policy. The circumstances as set forth and documented in the Complaint and its Annexes are sufficient to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.
Pursuant to paragraph�4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent meets none of the safe harbors in paragraph 4(c) of the Policy.� The Respondent has not been commonly known by the disputed domain name, and does not claim to have made any noncommercial or fair use of the domain name. And the Respondent has presented no evidence of the use of, or demonstrable preparations to use, the disputed domain name in connection with any bona fide offering of goods or services prior to notice of this dispute.�
Thus, the Respondent’s claim of legitimacy appears to be based solely on unsupported assertions regarding prospective use and on the contention that “xnergy” is a common word. As noted above, there is nothing compelling in the record even remotely suggesting that “xnergy” is a common word having any recognizable generic or “dictionary” meaning. Moreover, the record unequivocally reflects the Respondent’s opportunistic registration of the disputed domain name after learning of the Complainant and the Complainant’s use of the XNERGY mark, which knowledge the Respondent obtained as a direct result of having undertaken to perform web design services for the Complainant.
In view of the foregoing, the Panel is finds that the Complainant has satisfied its burden of demonstrating that the Respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph�4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, 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 its website or location.
The examples of bad faith registration and use set forth in paragraph�4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.�D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No.�D2004-0230. Nevertheless, paragraph�4(a)(iii) embodies a requirement that is “satisfied only if the Complainant proves that the registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith”. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.�D2000-0003.
As noted above, the disputed domain name is identical to Complainant’s XNERGY mark. The Respondent clearly was aware of the Complainant and the Complainant’s trademark rights when the Respondent registered the disputed domain name. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No.�D2001-0492, when a domain name is so obviously connected with a complainant and its products or services, its very use by a respondent shown to be aware of this connection suggests “opportunistic bad faith”. The Panel draws the same conclusion here with respect to the Respondent’s clearly opportunistic registration of the disputed domain name. In the circumstances of this case, the fact that the Respondent’s has made no active use of the domain name is immaterial, as it is well settled under the Policy that a respondent’s passive holding of a domain name does not preclude a finding of bad faith registration and use. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Accordingly, the Panel finds that the Complainant has met its burden of establishing bad faith registration and use under 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.
William R. Towns
Sole Panelist
Date: March�21,�2007
1 The Respondent alleges that the disputed domain name previously was being used in connection with a pornographic website.
2 The use of “xnergy” by a single radio station, an investment firm, and possibly a pornographic web site, without more, fails to demonstrate that “xnergy” is a common word possessed of any generic or “dictionary” meaning.
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