Complainant is Liberty Utilities (America) Co. of Oakville, Canada (also “CA”), represented by Husch Blackwell LLP, United States of America (“United States” or “US”).
Respondent is Christopher Ohrstrom of The Plains, Virginia, United States, represented by K&L Gates LLP, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2016. On October 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 10, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on October 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2016. On November 3, 2016, Respondent requested an automatic 4‑day extension of the deadline to file a Response. The Center granted the requested extension and confirmed that the new deadline for Response was November 11, 2016. The Response was filed with the Center November 11, 2016.
The Center appointed Christopher S. Gibson, Roderick M. Thompson and Perry J. Viscounty as panelists in this matter on December 9, 2016. The Panel finds that it was properly constituted. Each member of 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
Complainant is a utility company that owns six trademark registrations (the “LIBERTY marks”) registered in the United States and Canada, as follows:
Trademark
Country
Registration
No.
Registration
Date
Goods and Services
LIBERTY ENERGY & Design
US
4,055,699
11/15/2011
Utilities services, namely regulated gas and electric distribution services in Class 39
LIBERTY UTILITIES
US
4,530,320
5/13/2014
Utilities services, namely regulated gas and electric distribution services; Utility services, namely providing water and sewer services in Class 39
Waste water treatment services in Class 40
LIBERTY UTILITIES
CA
TMA933,312
4/4/2016
Utilities services, namely regulated gas and electric distribution services; Utility services, namely providing water and sewer services; Waste water treatment services
LIBERTY UTILITIES & Design
US
4,530,321
5/13/2014
Utilities services, namely regulated gas and electric distribution services; Utility services, namely providing water and sewer services in Class 39
Waste water treatment services in Class 40
LIBERTY UTILITIES & Design
CA
TMA933,310
4/4/2016
Utilities services, namely regulated gas and electric distribution services; Utility services, namely providing water and sewer services; Waste water treatment services
LIBERTY WATER & Design
US
4,048,644
11/1/2011
Utility services, namely providing water and sewer services in Class 39
Waste water treatment services in Class 40
Complainant owns the domain name and uses it for the primary website of its business.
Respondent is an investor in Liberty Energy Trust GP, LLC, a Delaware limited liability company (“Liberty Energy Trust”), which is focused on financing and investing in companies involved in the development of liquid natural gas (“LNG”) and pipeline infrastructure. Respondent registered the Domain Name on March 14, 2013 in conjunction with his role as an investor in Liberty Energy Trust. Since then, Liberty Energy Trust has used the Domain Name for its website. For the purposes of the Response, references to Respondent refer collectively to Mr. Ohrstrom and Liberty Energy Trust. 5. Parties’ Contentions A. Complainant
(i) Identical or confusingly similar
Complainant states it has continuously used its LIBERTY marks to identify goods and services in the United States and Canada since as early as 2011. Complainant further states that it expends substantial amounts annually to market and promote its services under the LIBERTY marks. Complainant markets its services through different media formats, including online, reinforcing its brand to consumers. Complainant uses its LIBERTY marks in connection with its website at “www.”. Complainant used the mark LIBERTY ENERGY on trucks, for community events, and in brochures in 2011. Complainant claims that as a result of years of consistent and continuous advertising, marketing, and commercial success, its LIBERTY marks are well-known in the United States and Canada.
Complainant contends that the Domain Name is confusingly similar to Complainant’s LIBERTY marks, which consumers associate with Complainant. The Domain Name includes the words “liberty” and “energy,” and thus consists only of Complainant’s LIBERTY marks. Additionally, the inclusion of the term “energy” increases the likelihood of confusion because it is directly related to Complainant’s services offered under the LIBERTY marks. Complainant uses its LIBERTY marks in connection with providing utility services, including the distribution of electricity (or energy). The terms “utilities” and “energy” are descriptive of Complainant’s services provided in connection with the LIBERTY marks, and therefore the dominate portion of Complainant’s mark is the word “liberty”. Accordingly, the Domain Name is confusingly similar to Complainant’s Liberty marks.
Complainant states that the purpose of Respondent’s investment fund is to focus on investments and sales with respect to companies in the LNG and pipeline infrastructure industries. Complainant asserts that Respondent markets its fund in manner that will confuse third parties because Complainant provides services in those same industries. Allowing Respondent to continue as registered holder of the confusingly similar Domain Name will be detrimental to Complainant. Complainant claims that if Respondent continues to use the Domain Name, this use will infringe Complainant’s LIBERTY marks and cause irreparable damage to its business and goodwill. Because the LIBERTY marks are uniquely associated with Complainant, a website with an identical or similar name that is registered to and operated by any entity other than Complainant will cause confusion and lead Internet users to believe the website is owned, operated by, affiliated with or otherwise approved by Complainant.
(ii) Rights or legitimate interests
Complainant contends that Respondent has no rights to the marks, LIBERTY or LIBERTY ENERGY TRUST, and is not commonly known by the Domain Name. Further, Complainant maintains that Respondent has no legitimate claim to any trademark rights to the Domain Name or the term “liberty” in connection with providing utility services. Complainant states that Respondent registered the Domain Name in 2013, after Complainant began heavily using the LIBERTY marks.
Complainant argues that Respondent was aware, or should have been aware through a search of the United States Patent and Trademark Office (“USPTO”) website, that Complainant had registered and used the LIBERTY marks. Further, Complainant states that Respondent uses the Domain Name for an online news source with a commercial purpose in direct competition with Complainant’s services. Complainant asserts that this commercial use by Respondent has caused actual confusion by consumers and users of Complainant’s website and threatens to cause further confusion and to divert consumers from Complainant’s website. Thus, Complainant asserts that Respondent’s use of the Domain Name infringes on Complainant’s LIBERTY marks. Based upon the foregoing, Complainant contends Respondent is not making a legitimate noncommercial or fair use of Complainant’s LIBERTY marks.
(iii) Registered and used in bad faith
Complainant claims the evidence demonstrates that Respondent registered the Domain Name in bad faith and is using it in bad faith. Complainant began operating its website located at to provide utility services more than two years before Respondent registered the Domain Name. During the time before Respondent’s registration, Complainant claims that it had established its connection between utility services and the term “liberty”. Through extensive use of the LIBERTY marks, consumers have come to associate the LIBERTY marks with Complainant’s provision of utility services. Complainant states that Respondent registered and began using the Domain Name to provide services in the exact same industry as Complainant only after Complainant’s services had become well-known by its customers.
Complainant contends that due to its extensive and continuous use of its LIBERTY marks and its website at before Respondent’s registration of the Domain Name, and due to the similarity between Complainant’s services and Respondent’s services, Respondent either was aware or should have been aware that the Domain Name would cause a likelihood of confusion with the LIBERTY marks when Respondent registered the Domain Name. Complainant states that registration in bad faith can be established by such constructive notice when Complainant’s marks were known and extensively used prior to Respondent’s registration.
Respondent is also using the Domain Name in bad faith by attempting to attract, for commercial gain, consumers by creating a likelihood of confusion with Complainant’s LIBERTY marks as to the source, sponsorship, or endorsement of Respondent’s services and website. The Domain Name incorporates Complainant’s LIBERTY marks, with the dominant portion of Complainant’s mark being the term “liberty”. Complainant argues that a finding that Respondent is infringing Complainant’s mark is itself sufficient to support a finding of bad faith. In the present case, Respondent’s use of the Domain Name infringes Complainant’s LIBERTY marks because the dominant portion of the Domain Name is the exact same as the LIBERTY marks and Respondent’s use is substantially related to the services provided by Complainant.
For these reasons, Complainant asserts that Respondent has registered the Domain Name in bad faith based on Respondent’s knowledge of Complainant’s LIBERTY marks and that Respondent is using the Domain Name in bad faith based by intentionally attempted to attract, for commercial gain, Internet users to the Domain Name, by creating a likelihood of confusion with Complainant’s LIBERTY marks as to the source, sponsorship, affiliation, or endorsement of Respondent and the Domain Name. B. Respondent
Respondent requests that the Panel deny Complainant’s Complaint. Respondent contends that Complainant filed the Complaint in bad faith and failed to meet its burden of proving each of the three elements under the Policy. Respondent asserts that Complainant never raised these issues with Respondent prior to filing the Complaint. Respondent has used the Domain Name for over three years in connection with its legitimate business that targets individuals and companies completely distinct from Complainant and in an entirely different geographic region. Respondent contends there is no basis in fact or law for Complainant’s assertion that Respondent has engaged in cybersquatting, which the Policy was intended to remedy.
(i) Identical or confusingly similar
Respondent asserts that Complainant has failed to establish that: (1) the Domain Name and Complainant’s marks are confusingly similar given (a) the differences in the marks; (b) Complainant’s purported rights in the asserted marks are, at most, subject only to thin protection because they exist in a crowded field; and (c) the differences in the target audience and services offered under the Domain Name and Complainant’s purported marks.
Respondent states that Complainant does not (and cannot) assert that the Domain Name is identical to a trademark in which Complainant claims to have rights. Thus, Respondent argues that the Complaint must be denied unless Complainant has proven that the Domain Name is confusingly similar to a trademark in which it claims to have rights. Complainant has failed in this regard for the following reasons.
First, Respondent contends that Complainant overstates its rights in the LIBERTY marks. While Complainant asserts it has used the term “liberty” since 2011, Complainant failed to provide evidence that shows use of “liberty” as a stand-alone mark and does not have any trademark registrations for “liberty” alone. The word “liberty” is commonly used in connection with a variety of commercial industries throughout the United States and around the world, including in connection with utility services, precluding any attempt by Complainant to claim broad rights in the word “liberty” alone. Respondent emphasizes that Complainant lack of exclusive rights in the word “liberty” alone is even stronger in this case because the complained of use by Respondent is in connection with its use of the term “liberty” as a reference to the Liberty Bell in the city of Philadelphia, Pennsylvania. In addition to using the word “liberty” in reference to its location, Respondent adopted a modified image of the Liberty Bell as part of its brand to further its association with Philadelphia and the Liberty Bell’s iconic symbolization of American independence, which represents the heritage of Liberty Energy Trust’s investor base and the geographical focus of its operations.
Second, Respondent states that while Complainant owns a federal trademark registration for LIBERTY ENERGY & design, it has not provided any evidence of use of LIBERTY ENERGY without that design element. Complainant does not own the domain name , and despite Complainant providing the Panel with printouts of its website at , there is not a single use of “Liberty Energy,” with or without the design element, on those printouts. As to the purported evidence of Complainant’s use of its LIBERTY ENERGY & design mark, Respondent argues that Complainant concedes that the evidence is from 2011 – before Complainant purportedly began to market the use of compressed LNG as part of its business. Thus, because the use of “liberty” alone or in conjunction with other words is entitled, at most, to thin protection, any rights Complainant has shown in LIBERTY ENERGY and design are necessarily limited to the mark with the design element, and only in connection with utility services.
Third, Respondent asserts that Complainant provides no evidence to support its claim that its LIBERTY marks are well-known in the United States and Canada. For example, Complainant does not provide any evidence of its yearly revenue, expenditures on advertising or anything else that could provide a basis for the Panel to conclude that the LIBERTY marks are well-known. On the contrary, Respondent never even heard of Complainant until earlier in 2016.
Fourth, Respondent states that Complainant has failed to provide evidence that it and Respondent provide similar services or target similar markets. Respondent is in the business of financing and investing in companies dedicated to the development of LNG and pipeline infrastructure, and its target market are stakeholders that are seeking to invest in such companies. Respondent does not have any electric, gas or other utility customers, has no retail customers, and does not market its services to general consumers. In contrast, Complainant offers “utility services, including the distribution of electricity” and its customers are necessarily those looking for utility services, not those looking to invest in gas pipelines and infrastructure. Respondent argues that Complainant conflates these two different services and intended audiences and reaches the conclusion, without evidence, that third parties will be confused.
Respondent states that the sole connection between Complainant and the natural gas industry is its assertion that, since early 2014, it has “marketed the use of compressed natural gas and liquid natural gas as mechanisms to service non-pipeline communities as part of its global strategy and continued expansion.” That statement cannot meet Complainant’s burden. Complainant offers no evidence that its consumers are the same as Respondent’s target stakeholders. Complainant’s statement that it uses its LIBERTY marks in connection with “compressed natural gas and liquid natural gas as mechanisms to service non-pipeline communities,” ignores the key distinction between distribution services and financial services. Complainant fails to point to a single instance of actual confusion. Even assuming a utility service provider marketing natural gas as an alternative energy source is in the same industry and targets the same individuals or companies as a private equity fund that invests in pipeline and infrastructure development, Complainant ignores that Respondent has been involved in efforts to invest in (i.e., privatize) Philadelphia Gas Works since March 2013 – approximately a year before Complainant’s alleged entry into any market involving natural gas, which precludes any assertion of prior rights.
Finally, Respondent argues that Complainant’s assertion that the Domain Name is confusingly similar to the LIBERTY marks cannot withstand the appropriate legal standard as applied to the facts. While Complainant attempts to cherry-pick the similarities between the Domain Name and its LIBERTY marks, Respondent states it is well-established that marks must be compared as a whole, not their individual components, because the likelihood of confusion analysis depends on the overall impression created by the marks in their entirety. Complainant ignores this legal standard and falsely alleges that “the Disputed Domain Name consists only of Complainant’s Liberty Marks,” ignoring the inclusion of the word “trust” in the Domain Name. Respondent argues that Complainant’s failure to acknowledge the word “trust” was not inadvertent. While words like “energy” or “trust” may be considered descriptive when used individually, the analysis is different when the word is used in combination with others. As used in combination in the Domain Name, the words “liberty,” “energy,” and “trust” are not just descriptive, but instead convey distinct commercial impressions different from the impressions created by Complainant’s marks that serves to distinguish Respondent’s services related to financing and investment from those of Complainant and others in the utility industry who use the term “Liberty”. While Complainant alleges that Respondent’s use of the Domain Name will cause confusion and be detrimental to Complainant, Complainant fails to put forth any evidence of actual confusion by Internet users despite the fact that the two websites have co-existed for more than three years.
Respondent states that for all of these reasons, Complainant has failed to demonstrate that Complainant’s marks and the Domain Name are confusingly similar.
(ii) Rights or legitimate interests
Respondent maintains that Complainant failed to set forth a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name. Complainant’s allegation is false that Respondent “has no rights to the mark Liberty or Liberty Energy Trust, and is not commonly known by the domain name .” In March 2013, Mr. Ohrstrom and others formed the entity known as Liberty Energy Trust to acquire Philadelphia Gas Works located in Philadelphia. Respondent, like many others in Pennsylvania, chose to include “liberty” in its corporate name because it was located and was going to be doing business (and continues to be based) in Philadelphia, the home of the iconic Liberty Bell. Respondent uses a modified image of the Liberty Bell as part of its Liberty Energy Trust logo, which is absent from Complainant’s evidence that purports to be a printout of the site linked to the Domain Name. Around the same time it incorporated Liberty Energy Trust, Respondent obtained the Domain Name. Thus, Respondent contends that there can be no dispute that Respondent has legitimate rights in the Domain Name at the time of its registration.
Respondent states that it continues to have legitimate rights in the Domain Name. Respondent has been known by the name Liberty Energy Trust for years prior to October 18, 2016, the date on which Respondent was notified of the Complaint. Respondent has been using the Domain Name in connection with the bona fide promotion of its services, which are unrelated to the services offered under Complainant’s LIBERTY marks. The content on Respondent’s website clearly identifies the services that it offers. Since 2014, Liberty Energy Trust has been involved in the development of the Philadelphia Container Port Development (“Southport Marine Terminal”) in Philadelphia. The website makes clear that the company is offering different services than those offered by Complainant, evidencing the fact that Respondent has no intent to misleadingly divert consumers looking for Complainant’s services to its own website because the services are not reasonable substitutes for one another.
For these reasons, Respondent contends that Complainant fails to set forth a prima facie case because Respondent has legitimate rights and interests in the Domain Name. Even if Complainant did make such a case, Respondent has met its burden of proving that it is commonly known as Liberty Energy Trust and has been using the Domain Name in connection with the bona fide offering and promotion of its services.
(iii) Registered and used in bad faith
Respondent states it registered and is using the Domain Name in good faith because it registered and is using the Domain Name to promote its services and its team. Complainant has failed to adduce any evidence showing that Respondent registered or acquired the Domain Name in bad faith, because no bad faith exists. Where a respondent has rights and legitimate interests in the domain name, by definition its registration and use is not in bad faith.
Moreover, Respondent maintains that none of the circumstances identified in paragraph 4(b) of the Policy are present in this case. Respondent did not have, and currently does not have, intent to transfer the Domain Name for the purposes of selling, renting, or otherwise transferring the registration to Complainant. Respondent also did not register the Domain Name solely to prevent Complainant from reflecting its mark in corresponding domain names. Respondent registered the Domain Name in early 2013 for the sole purpose of advertising the services it offered and educating stakeholders about the company in preparations for the Philadelphia Gas Works acquisition, and did so at least a year prior to the time at which Complainant even began to offer services that were in any way related to natural gas. Respondent’s use of the word “liberty” was designed to signal to stakeholders that it was in the business of investing in natural gas and infrastructure projects in the Philadelphia area. It was not in any way related to Complainant’s use of the word liberty. Respondent only learned of Complainant’s existence in early 2016 in connection with a pending transaction.
Respondent asserts that while Complainant alleges it has established its connection between utility services and the term “liberty” through use of its LIBERTY marks, Complainant cannot claim to own the word “liberty” commonly used in various commercial settings. Respondent is not, nor was it ever, engaged in the utility services that, according to Complainant, consumers have come to associate with Complainant’s marks, despite Complainant’s repeated attempts to construe distribution and financial services as part of the same industry.
Respondent states that to prove bad faith registration, Complainant must show that Respondent was aware of Complainant’s trademark when it registered the Domain Name. It is undisputed that Respondent was not aware of Complainant at the time it registered the Domain Name. Respondent in this case unequivocally denies the allegation that it had any knowledge of Complainant, let alone its purported trademark rights, at the time it registered the Domain Name. Respondent only became aware of Complainant recently and not in connection with Respondent’s providing services to the public. Because Complainant has no basis to allege actual knowledge, Complainant alleges that Respondent was under constructive notice of Complainant’s mark. Additionally, Complainant did not set forth any evidence, and none exists, that Respondent was ever held to have registered a domain for the purpose of cybersquatting or in bad faith. Complainant’s assertion that Respondent should be held to have been on constructive notice of Complainant’s use of the Liberty marks should be rejected.
Finally, Complainant alleged that Respondent is using the Domain Name in bad faith by “attempting to attract, for commercial gain, consumers by creating a likelihood of confusion with Complainant’s Liberty marks as to the source, sponsorship, or endorsement of Respondent’s services and website.” Respondent’s website refers only to one project: the Southport Marine Terminal in which Respondent participates as a financing and development entity. The Domain Name provides access to the Philadelphia Regional Port Authority presentation prepared for the public hearing process in which Respondent participated, making it implausible that anyone would be confused that Complainant was the source of or sponsored Respondent’s services.
Respondent states that because Complainant does not and cannot cite to any evidence that Respondent registered the Domain Name in bad faith, it argues that a finding of infringement itself is sufficient to support a conclusion of bad faith. Complainant’s assertion that a finding of infringement automatically requires a finding of bad faith is a mischaracterization of the Policy. The requirement of bad faith is separate and distinct from the other elements required in the Policy. In other words, whether or not a respondent has infringed a complainant’s intellectual property rights is not necessarily determinative of whether a respondent has registered the domain name in bad faith. Accordingly, Complainant has failed to satisfy the bad faith requirement set forth in paragraph 4(a)(iii) of the Policy.
Because Complainant has failed to meet its burden of establishing all three elements pursuant to paragraph 4(a) of the Policy, Respondent respectfully requests that the Administrative Panel deny the remedies requested by Complainant.
(iv) Reverse Domain Name Hijacking (“RDNH”)
Respondent requests that the Panel find, pursuant to paragraph 15(e) of the Rules, that Complainant has engaged in RDNH by bringing the Complaint in bad faith for the purpose of harassing Respondent. Respondent contends that Complainant is attempting to use the Policy to gain leverage in a dispute related to a separate business transaction. Respondent did not learn of the existence of Complainant until approximately January 2016 in conjunction with Respondent’s attempt to acquire a certain project in the LNG development sector. During those negotiations, Respondent learned that Complainant owned an interest in one of the project entities up for sale and that, before any sale could be consummated, Complainant had to consent to the transaction. Respondent states that Complainant intended to withhold consent without justification. Without advance notice to Respondent, Complainant filed this action shortly thereafter. Respondent claims that Complainant is aware that Respondent’s current project with the Philadelphia Regional Port Authority is a state-run public process and that casting a shadow over Respondent via this dispute has the potential to be disruptive to that process.
Respondent argues that Complainant’s bad faith motive is confirmed because Complainant has not asserted its purported trademark rights against a separate company, Liberty Property Trust – a company that also participated in bidding for the Philadelphia Regional Port Authority project – and has not filed similar complaints against any other “liberty” domain names (e.g., ). Respondent claims that Complainant’s use of the Policy to harass Respondent to gain leverage in a separate business dispute is an unacceptable use of the Policy and is itself sufficient to find RDNH.
Respondent states that a finding of RDNH is also warranted because Complainant knew or should have known at the time it filed the Complaint that it could not prove one of the essential elements required by the Policy. Any reasonable investigation would have revealed the weaknesses in the Complaint, as demonstrated by the fact that Complainant fails to allege any evidence that Respondent was using the Domain Name in a manner that would suggest it was trying to target Complainant’s consumers, gain an unfair advantage over Complainant, or even enter into the same market as Complainant. Additionally, Complainant’s failure to recognize the narrow scope of protection to which its marks are entitled is further evidence of its bad faith. These deficiencies are especially telling where Complainant is represented by professional counsel. For the reasons set forth above, Respondent requests that the Panel find that Complainant has engaged in RDNH by bringing this Complaint in bad faith for the purposes of harassing Respondent. 6. Discussion and Findings
To succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
Complainant has demonstrated that it has registered rights in its LIBERTY trademarks. Complainant’s ownership of its registered LIBERTY marks (and in particular, the LIBERTY ENERGY mark) satisfies the threshold requirement of having trademark rights for purposes of this first element under paragraph 4(a) of the Policy. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.1 (“If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights”).
Respondent has argued that the Domain Name is not confusingly similar to Complainant’s LIBERTY marks because (i) Complainant’s rights in its marks are subject only to thin protection as they exist in a crowded field (i.e., the word “liberty” is commonly used in connection with a variety of commercial industries throughout the United States and around the world, including in connection with utility services); (ii) Complainant has provided no evidence to support the claim that its LIBERTY marks are well-known; (iii) the target audiences for the Domain Name and Complainant’s marks are different; (iv) the words “liberty,” “energy,” and “trust” used in combination in the Domain Name convey a distinct commercial impression that distinguishes Respondent, its name and services (i.e., financing / investment) from Complainant and its marks; and (v) Complainant failed to provide evidence of actual confusion by Internet users despite the parties’ websites co-existing for more than three years.
Notwithstanding these arguments, some of which may be relevant to the second and third elements under the Policy, the test under the Policy for determining whether the Domain Name is confusingly similar to Complainant’s LIBERTY marks is uncomplicated, confined to a comparison of the Domain Name and Complainant’s marks. The issue in the analysis of the first factor is whether the alphanumeric string comprising the disputed domain name is identical to Complainant’s mark or sufficiently approximates it, visually, phonetically, in meaning or overall impression, so that the disputed domain name on its face is “confusingly similar” to Complainant’s mark. Further, UDRP panels typically apply a “low threshold” for this test under the Policy’s first element. See Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011.
The Panel observes that the word “liberty” is used by many businesses in combination with other terms (e.g., Liberty Mutual Insurance). This common use of the word “liberty” is unsurprising, particularly in the United States, where the term is often taken to refer to one of the core founding principles of the country. Thus, the presence of the term “liberty” in both Complainant’s LIBERTY marks and the Domain Name is not enough, on its own, to give rise to confusing similarity between them. Further, and in line with this analysis, Complainant’s mark, LIBERTY UTILITIES, which adds the word “utilities” to the term “liberty,” is sufficiently distinct from the phrase “liberty energy trust” as used in the Domain Name, such that there is no confusingly similarity.
Based on a comparison limited only to Complainant’s LIBERTY ENERGY mark and the Domain Name , the Domain Name incorporates two elements of Complainant’s mark, namely the words “liberty” and “energy,” while adding the word “trust.” The words “liberty” and “energy,” while commonly used words, when used together represent dominant elements, as compared to the added word “trust” in the Domain Name, since it is generally accepted that the portion of a mark appearing first will be first identified by consumers (and registration authorities). For example, the company Liberty Mutual Insurance is sometimes known simply as Liberty Mutual. Therefore, the Panel considers that the terms “liberty” and “energy” appearing in both the Domain Name and Complainant’s LIBERTY ENERGY mark create an overall impression that could lead to confusion among Internet users as to whether the Domain Name is associated in some way with Complainant. See Red Bull GmbH v. Paul Battista,WIPO Case No. D2010-0353 (quoting SANOFI-AVENTIS v. Jason Trevenio,WIPO Case No. D2007-0648) (“[c]onfusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: ‘Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?’”).
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s LIBERTY ENERGY mark under the Policy, and Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that Complainant has failed to meet its burden of proof on this element.
Among the allegations made by Complainant are that Respondent is not commonly known by the Domain Name, that Respondent uses it for an online news source with a commercial purpose in direct competition with Complainant’s services, and that this use has caused actual confusion among users of Complainant's website. Further, Complainant claims that Respondent was aware, or should have been aware, that Complainant had registered and used its LIBERTY marks, and that Respondent’s use of the Domain Name infringes on those marks.
Under paragraph 4(c) of the Policy, the following circumstances, if found by the Panel to be proved based on the evidence, will demonstrate a respondent’s rights or legitimate interests to a domain name:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;”
Here, Respondent has demonstrated that the Domain Name has been used in connection with a bona fide offering of goods or services. Respondent Christopher Ohrstrom explained that he registered the Domain Name in March 2013 in his role as an investor in Liberty Energy Trust. Since that time, the Domain Name has been used for the company’s website. Liberty Energy Trust is a Philadelphia-based investment company (private equity fund) in the business of financing and investing in companies focused on the development of LNG and related pipeline infrastructure. The content of the website linked to the Domain Name accurately reflects the company’s business. The Panel finds that Respondent has used the Domain Name in connection with a bona fide offering of goods or services prior to any notice of the dispute reaching Respondent.
The Panel also concludes that Respondent Ohrstrom registered the Domain Name for use in a business that is commonly known by the Domain Name. See General Electric Company v. Estephens Productions,WIPO Case No. D2009-1438 (“…it is evident from a perusal of the Respondent’s websites and the Respondent’s company registration details submitted by the Complainant that the Domain Name corresponds to the Respondent’s company name. Moreover, the Domain Name is used precisely for a website advertising that company’s products and services. For purposes of the UDRP, the reflection of the Respondent’s company name in the Domain Name satisfies paragraph 4(c)(ii) of the Policy…”).
As to Complainant’s allegation that Respondent uses the Domain Name for a business in direct competition with Complainant’s services, the record does not support this claim. In contrast to Complainant’s utility services, Respondent does not offer electric, gas or other utility services, and has no retail customers. Respondent markets itself as a private equity fund for investors looking to invest in LNG and related infrastructure. Further, Complainant has offered no evidence of actual confusion in the marketplace. Respondent has stated that he and his colleagues at Liberty Energy Trust were not aware of Complainant at the time he registered the Domain Name. Finally, even if Respondent had conducted a search of the USPTO’s trademark database (there is no evidence that Respondent did so), it is unclear, from the Panel’s perspective, whether Complainant’s 2011 registration of its LIBERTY ENERGY mark with design element (and not a word mark) in class 39 for utility services would be considered sufficient, for example, to prevent Respondent’s registration of the mark LIBERTY ENERGY TRUST in class 36 pertaining to financial and monetary services.
Accordingly, Complainant has failed to satisfy the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
As noted above, to succeed on its claim Complainant must demonstrate that each of the three elements in paragraph 4(a) of the Policy has been satisfied. Given the Panel’s findings that Complainant has failed to demonstrate that Respondent lacks any right or legitimate interest in the Domain Name, it is not strictly necessary for the Panel to consider the issue of registration and use in bad faith. However, Respondent has clearly denied that it had any knowledge of Complainant’s LIBERTY marks when it registered the Domain Name. Under the circumstances, the Panel does not consider this to be a case in which constructive notice should be deemed on the part of Respondent. The word “liberty,” as discussed above, is used in naming many commercial enterprises, particularly in the Philadelphia area where Respondent Liberty Energy Trust is located and where the word’s meaning refers not only to a founding principle of the country, but also to the Liberty Bell located in that city. Moreover, the record indicates that Complainant registered its LIBERTY ENERGY mark in November 2011, but did not begin offering utility services related to LNG until 2014 “to service non-pipeline communities as part of its global strategy and continued expansion,” after the Domain Name was already registered by Respondent. Further, there is no evidence in the record that Respondent has used the Domain Name unfairly in attempt to attract, for commercial gain, Complainant’s consumers by creating a likelihood of confusion with Complainant or its LIBERTY marks.
Complainant has argued that this would be a case of trademark infringement under United States trademark law and that a finding that Respondent is infringing Complainant’s LIBERTY marks is itself sufficient to support a finding of bad faith. While in certain cases trademark infringement aligns with bad faith under the Policy, this is not always the case. Here, Complainant has not demonstrated Respondent’s bad faith. The Panel notes that the parties remain free to pursue their claims, including any possible trademark infringement claim, in the courts.
Accordingly, in view of all of the above circumstance, the Panel determines that Complainant has failed to satisfy the third element under paragraph 4(a) of the Policy. D. Reverse Domain Name Hijacking
Respondent has requested that the Panel make a finding of RDNH against Complainant. As set forth in paragraph 4.17 of WIPO Overview 2.0:
Paragraph 15(e) of the UDRP Rules provides that, 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 an abuse of the administrative proceeding”. Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or of the respondent’s rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name.
Here, it is clear that Complainant had valid and pre-existing trademark rights in its LIBERTY ENERGY mark, such that Complainant had colorable, albeit weak claims under the Policy, especially without knowing more about Respondent and how it would respond to such claims (e.g., whether Respondent would admit or deny knowledge of Complainant and its LIBERTY marks). Respondent alleged that Complainant brought the Complaint as a tactic to create issues in an unrelated transaction where Complainant “intended to withhold consent” unreasonably. The Panel finds there is only indirect and insufficient evidence asserted to link the two matters. There is no allegation that the Domain Name was mentioned in the negotiations for the unrelated transaction, and that transaction was not mentioned in the Complaint. Moreover, it might be possible, for example, to infer that Complainant’s consent in that transaction was withheld (though other inferences are possible) because of an unexpressed concern about the Domain Name; such a concern would not support a claim for RDNH. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Presiding Panelist
Roderick M. Thompson
Panelist
Perry J. Viscounty
Panelist
Date: January 6, 2017
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