The Complainant is Insight Energy Ventures LLC of Royal Oak, Michigan, United States of America ("United States") represented by James A. Bumbaugh, United States.
The Respondent is Alois Muehlberger, L.M.Berger Co.Ltd. of Cologne, Germany. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with PSI-USA, Inc. dba Domain Robot (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 4, 2016. On October 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 5, 2016, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 2, 2016.
The Center verified that the Complaint together with the amended 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 November 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2016. An informal communication was filed with the Center on November 9, 2016. On the same day, the Center requested the Respondent to confirm whether the submitted communication was his complete Response, to which he did not reply.
The Center appointed John Swinson as the sole panelist in this matter on November 30, 2016. 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 Insight Energy Ventures of the United States. The Complainant provides technological solutions to utility companies in relation to home energy management. According to the Complaint, the Complainant targets customers nationally (within the United States) and internationally.
The Complainant owns United States registered trade mark numbers 5069948, 5000171, 5000170, 5000169 and 5000168 for POWERLY in various classes, each of which was filed on October 6, 2015. Trade mark number 5069948 was registered on October 25, 2016, and numbers 5000171, 5000170, 5000169, and 5000168 were registered on July 12, 2016.
The Complainant states that it has also applied for United States trade mark registrations for POWERLEY. The Panel has ascertained that the Complainant filed four such applications in February 2015. One of these applications was registered on December 29, 2015.
The Complainant offers a home energy management solution under the brand "Powerley". The Complainant's primary business website is connected to the domain name .
The Respondent is Alois Muehlberger of L.M.Berger Co.Ltd., Germany. The Respondent did not file a formal Response, and consequently little information is known about the Respondent.
The Respondent registered the Disputed Domain Name on March 19, 2004. There is no active website associated with the Disputed Domain Name. 5. Parties' Contentions A. Complainant
The Complainant's contentions are as follows: Identical or Confusingly Similar
The Complainant has had to do business as "Powerley" despite its rights in the POWERLY mark due to the Respondent's claim to the Disputed Domain Name. The United States Patent and Trademark Office ("USPTO") has determined that POWERLY and POWERLEY are confusingly similar. The Complainant operates its business from the domain name . Rights or Legitimate Interests
The Respondent has held the Disputed Domain Name since 2004, but has not used it for any known purpose. The Respondent appears to hold 120 domain names, none of which appear to be in use. The Respondent has registered the Disputed Domain Name to resell it for a profit, which is not considered a legitimate business purpose under paragraph 4(b)(i) of the Policy.
As the Complainant has rights in the trade marks POWERLY and POWERLEY, any sale of the Disputed Domain Name to a third party would result in confusion and could subject the purchaser to an infringement claim. Registration and Use in Bad Faith
The Respondent has intentionally attempted to attract, for commercial gain, a purchaser of the Disputed Domain Name which would provide the Respondent with a profit from its sale. The sale of the Disputed Domain Name would create confusion in the market and would infringe the Complainant's trade mark rights. A sale for a high profit without any other legitimate use by the Respondent would constitute bad faith registration.
The Respondent has shown a pattern of bad faith registration. It holds approximately 120 domain names, none of which have been used for a legitimate purpose. The Respondent has owned most of the domain names for 10 years or more. B. Respondent
The Respondent did not formally reply to the Complainant's contentions but sent an informal communication discussed below under section 6.A. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though Respondent has not filed a Response. A. Informal Response
On November 9, 2016, following receipt of the Complaint, the Respondent sent an informal email communication to the Center. In that communication, the Respondent stated that he registered the Disputed Domain Name on March 19, 2004, at which time there was no "Powerly" brand registered in either the United States or in Europe. The POWERLY mark was filed on October 6, 2015, and the Complainant's Internet presence is at the domain name .
This communication does not constitute a formal Response under the Rules, and as such, the Panel has not taken it into consideration in reaching its decision. However, the Panel is aware of the timing of the relevant registrations as set out in the Respondent's email. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Complainant's trade marks.
The Complainant has provided details of its rights in the POWERLY mark, and the Panel has verified that the Complainant has such rights. The Panel has also ascertained that the Complainant owns a registered trade mark for POWERLEY.
The Disputed Domain Name is identical to the POWERLY mark. This mark is wholly incorporated into the Disputed Domain Name, and no other terms are added. Also, the Disputed Domain Name is confusingly similar to the POWERLEY mark, with the only difference being the omission of the second letter "e" from the Disputed Domain Name.
The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests and Registered and Used in Bad Faith
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has failed to provide any convincing submissions in relation to either of these elements of the Policy.
The Complainant states that, because the Respondent has been passively holding the Disputed Domain Name for over 10 years, this must mean that the Respondent intends to resell it, possibly to the Complainant, for a profit. The Complainant also states that the Respondent has engaged in a pattern of such conduct, as it owns 120 domain names, none of which are in use.
This is essentially the Complainant's entire basis for submitting that the Respondent has no rights to, or legitimate interests in, the Disputed Domain Name, and that the Respondent both registered and is using the Disputed Domain Name in bad faith.
There are a number of deficiencies in these arguments.
Most obviously, the Respondent registered the Disputed Domain Name more than 10 years before the Complainant registered either of its trade marks. The Complainant has provided no evidence to show that the Respondent was, or should have been, aware of the Complainant or its trade marks at the time the Complaint was filed, and certainly not at the time the Respondent registered the Disputed Domain Name, over 10 years ago.
Further, the Complainant has provided no evidence to suggest that its brand "Powerley" or either of its trade marks is famous, or that the Complainant was even operating in 2004, at the time the Disputed Domain Name was registered. In fact, according to the Complainant's website, this brand was created in approximately late 2014. Given this, there is absolutely no basis on which the Panel is willing to find that the Disputed Domain Name was registered in bad faith. This alone would prevent a finding in favor of the Complainant.
However, in addition to this, the Complainant has provided no evidence for its statement that the Respondent registered the Disputed Domain Name primarily for the purpose of selling it to a third party. The Complainant states that this must be the case, as the Respondent has been passively holding the Disputed Domain Name for over 10 years.
Under paragraph 4(b)(i) of the Policy, it would be evidence of registration and use in bad faith if there are circumstances indicating that the Respondent registered Disputed Domain Name primarily for the purpose of selling it to the Complainant or a competitor of the Complainant for a large profit. As neither of the Complainant's trade marks existed, this could not have been the Respondent's primary intention at the time the Respondent registered the Disputed Domain Name. Further, while passive holding can, in some circumstances, support a finding of bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003) there is no basis for such an assertion here. There is no evidence that the Respondent has used the Disputed Domain Name in bad faith.
Finally, the Complainant states that the Respondent has engaged in a pattern of conduct of registering domain names for the purpose of reselling, as he owns 120 domain names, none of which are in use. However, simply owning a number of domain names is not of itself evidence of bad faith. In order for the Panel to find that the Respondent has engaged in a pattern of conduct for the purpose of paragraph 4(b)(ii) of the Policy, the domain names which the Respondent has registered would need to reflect third party trade marks. Here, all but one of the domain names consist of generic or dictionary terms (for example, , being the town in which the Respondent has his address). There is no evidence of any sale by the Respondent of any of these domain names.
The purpose of the Policy is to adjudicate disputes in which a party has opportunistically and abusively registered a domain name which reflects an existing trade mark. There is simply no evidence that this was the case here.
Despite the Respondent having not filed a formal or complete response, the Panel finds that the Complainant has not met its burden of proving the second or third elements of the Policy. D. Reverse Domain Name Hijacking ("RDNH")
In coming to a decision the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following passage, namely:
"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding."
RDNH is defined in paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."
In this case the Respondent has not sought a finding of RDNH, but, as paragraph 15(e) of the Rules makes clear, such a finding is not dependent upon a request from the Respondent. If abuse is apparent on the face of the case papers, the Panel is under an obligation to declare it. See Goway Travel Limited v. Tourism Australia,WIPO Case No. D2006-0344 ("The Rules specifically put the burden on the Panel to determine whether a complainant has tried to use the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."). Thus, findings of RDNH have been made not only in cases where no such finding has been sought by the respondent, but also in cases where there has been no response (M Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941).
Abuse is commonly found where the complainant knew or ought to have known at the outset that for one reason or another the case was doomed to failure. The Panel refers to the decision of a three-member panel in Dumankaya Yapi Malzemeleri San. VE TiC. A.S v. Domain Administrator, Name Administration Inc. (BVI),WIPO Case No. D2015-1757, in which a finding of RDNH was made, in part, on this basis.
In this case the Complainant made no attempt to prove the existence of any trade mark rights prior to 2015, yet asserted without any supporting evidence that the Disputed Domain Name was registered in bad faith. The Complainant asserted use in bad faith, but made no proper attempt to justify that assertion. There is nothing in the evidence to suggest that the Respondent has been targeting the Complainant or its trade marks. The Complaint had no prospect of success on the facts set out in the Complaint, and the Complainant or those advising it must have been aware of that fact.
It appears to the Panel that the Complainant wishes to operate under the brand "Powerly", as opposed to "Powerley", and filed this Complaint in an attempt to obtain the corresponding domain name. This is an abusive use of the Policy.
In light of the above findings the Panel has no hesitation in finding that the Complainant has used the Policy in bad faith "to attempt to deprive a registered domain name holder of a domain name". The Panel finds that the Complainant is guilty of Reverse Domain Name Hijacking. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: December 12, 2016
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