The Complainant is Florida Power & Light Company, United States of America (“United States”), represented by Quinn Emanuel Urquhart & Sullivan, LLP, United States.
The Respondents are Registration Private, Domains By Proxy, LLC, United States / Alex Patton, Ozean Media, United States, and Conservatives for Responsible Stewardship, United States, self-represented.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2021. On August 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 4, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 5, 2021, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 13, 2021.
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 August 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2021. The Response was filed with the Center on September 7, 2021.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 29, 2021. 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 BackgroundThe Complainant is a rate-regulated electric utility that was incorporated as a public company under Florida law in 1925. Headquartered in Juno Beach, Florida, United States, it is now a subsidiary of NextEra Energy Inc. (formerly FPL Group Inc.). The Complainant is the largest energy company in the United States as measured by retail electricity produced and sold. The company serves more than 5.6 million customer accounts supporting more than 11 million residents across Florida. The record shows that the group has received media attention and awards for its efforts in clean energy, sustainability, ethics, and diversity, and it was ranked Number 1 in the electric and gas utilities industry in Fortune’s 2020 list of “World’s Most Admired Companies”. The Complainant operates a website at “www.fpl.com”, using a domain name that it has owned since 1993. The FPL word mark and the trademarked logo combining the letters FPL and a design with a white “zig-zag line” in a blue circle are featured on the Complainant’s website, letterhead, signage, and in print and media advertising.
The Complainant or its parent hold the following United States trademark registrations:
MARK
REGISTRATION NUMBER
REGISTRATION DATE
FPL (standard characters) (held by parent NextEra Energy, Inc.)
1299913
October 9, 1984
FPL (standard characters)
4295789
February 26, 2013
FPL (letters and design)
4295790
February 26, 2013
FPL (letters and design)
4956311
May 10, 2016
FPL (standard characters)
4956312
May 10, 2016
FPL (letters and design)
5348767
December 5, 2017
The Registrar reports that the Domain Name was registered on March 8, 2021, in the name of a domain privacy service. The Registrar identified the underlying registrant as the Respondent Mr. Patton, listing his organization as Ozean Media with a postal address in Alachua, Florida, United States and an email address using the domain name
Videos on the website associated with the Domain Name are labelled as productions of Conservatives for Responsible Stewardship (“CRS”), and the Complaint lists CRS as an additional Respondent. CRS describes itself on its website at “www.conservativestewards.org” as a “national nonprofit grassroots organization founded on the premise that environmental stewardship and natural resource conservation are inherently conservative”. The CRS website lists a postal address in Oakton, Virginia. The “History” page of the CRS website and federal tax filings on the website show that “Conservatives for Responsible Stewardship” is a “doing business as” name for a tax-exempt Illinois nonprofit corporation called “REP Environmental Education Foundation” founded in 1999.
The record includes screen shots of the website to which the Domain Name resolved in July 2021 (the “Respondent’s website”); the website is substantially the same at the time of this Decision. The Respondent’s website displays, in at least some browsers, the Complainant’s trademarked design logo and the name “Florida Power and Light (FPL)”. The landing page features a zig-zag line logo similar to the Complainant’s design mark (although not enclosed in a circle) and the headline, “Official Florida Power and Light Electricity Rate Notice”. Beneath that is a line reading, “Hold FPL Accountable” above two video clips. These are followed by text concerning a “Notice of Proposed Florida Power and Light (FPL) Electricity Rate Increase Notice:”
“Florida Power and Light’s (FPL) proposal calls for a $1.1 billion increase in base-rate revenues in 2022 and a $607 million increase in 2023.
With BILLIONS on the line, don’t you agree that Florida Power and Light (FPL) should be held accountable for their behaviors?”
The website includes links to the Florida Public Service Commission (“PSC”) docket and media articles, and buttons to call the PSC or the Complainant or send emails to the PSC or legislators.
There is no identification of the website operator in the text of the Respondent’s website. However, the videos displayed on the website show, at the end of each video, that they were produced by CRS.
The videos on the Respondent’s website are, respectively, critical of the Complainant’s practices in raising funds for a nuclear power plant that has not been constructed and allegedly setting policies that disadvantage property owners who install solar energy panels. Both contest the Complainant’s proposals for electricity rate increases.
There is no commercial advertising on the Respondent’s website or content unrelated to criticism of the Complainant’s policies and practices.
A footer at the bottom of the landing page states: “This is an official public service announcement.”
5. Parties’ Contentions A. ComplainantThe Complainant asserts that the Domain Name is confusingly similar to its FPL word and design marks, which it has not authorized the Respondents to use. The Complainant contends that the Respondents have no rights or legitimate interests in the Domain Name, because they are not known by a corresponding name and have deliberately sought to create confusion as to the source of the Respondent’s website, labelling it as “official” and using the terms “rate notice” in the Domain Name, along with a similar design logo on the site, suggesting that the associated website contains information from the Complainant rather than a third party. The Complainant argues that using such methods to deliberately mislead Internet users, while obscuring the identity of the website operator on the site and in the private domain registration, must be considered bad faith.
B. RespondentA Response was submitted on behalf of both Ozean Media and Conservatives for Responsible Stewardship, with Mr. Patton being the contact person. The Respondents argue that the Domain Name is not confusingly similar to the Complainant’s FPL mark but is rather “descriptive of the website’s intent, purpose, and use. The criticism offered is specific to FPL’s proposed electrical rate increase”.
The Respondents note that all parties are located in the United States and that WIPO panels in such cases have recognized a legitimate fair use interest, based on constitutional “free speech” principles, in using even a domain name identical to a trademark for bona fide noncommercial criticism, citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.6.2.
According to the Response, “Both Respondents are long established participants in the public policy arena and regulatory process in Florida and other U.S. states”. The Respondents observe that the Complainant is an investor-owned public utility that spends millions of dollars on lobbyists, campaign donations, and public relations and is currently seeking regulatory approval of historic rate increases. The Respondents argue that they are making fair use of the Domain Name for truthful and bona fide criticism of the Complainant’s practices and specific rate proposals, which is protected free speech in the United States and neither illegitimate nor bad faith under the Policy. They contend that they have not diverted Internet users for commercial gain, and they are not competitors or attempting to sell the Domain Name to the Complainant or competitors (holding a legal monopoly in providing electric service in the region, the Complainant does not have competitors in the traditional sense). The Respondents assert that they used a domain privacy service to avoid retaliation by the Complainant in Florida, citing instances of alleged retaliation in local media articles.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name 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 in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
6.1. Preliminary Matter: Respondent PartiesThe Rules, paragraph 1, define the respondent as “the holder of a domain name registration against which a complaint is initiated”. As is customary in cases of proxy registration, the underlying registrant Mr. Patton and his organization Ozean Media were added as Respondents once they were identified by the Registrar. See WIPO Overview 3.0, section 4.4. The domain privacy service continues to be listed as a formality but has not responded or otherwise indicated an interest in the proceedings. The Complaint added CRS as a Respondent presumably because it contributed videos to the Respondent’s website. The Response was filed on behalf of both Ozean Media and CRS and suggests that those parties are coordinating with each other and have been involved in controlling the website associated with the Domain Name.
In this case, the Panel finds it appropriate and efficient to consider Mr. Patton, Ozean Media, and CRS collectively as the “Respondents” in this proceeding. See WIPO Overview 3.0, section 4.11.2:
“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”
6.2. Substantive Analysis A. Identical or Confusingly SimilarThe first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Complainant holds trademark registrations for FPL word and combined word and design marks. The Domain Name incorporates the FPL mark in its entirety and adds words that do not prevent a finding of confusing similarity. See id., section 1.8. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s registered marks for purposes of the Policy, paragraph 4(a)(i) and concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy gives non-exclusive examples of instances in which a respondent may establish rights or legitimate interests in a 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) that 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.
Here, the Respondents claim noncommercial fair use of the Doman Name for a criticism site. Here is how such claims have been assessed:
“Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry.” WIPO Overview 3.0, section 2.5.
The nature of a disputed domain name may discredit fair use. Domain names identical to a complainant’s trademark “carry a high risk of implied affiliation”. Id., section 2.5.1. Here, the Domain Name includes the FPL mark in its entirety and adds the words “rate notice”, a term that appears to refer to a current rate proceeding and is ambiguous concerning source and meaning. The words do not obviously imply commentary or criticism, but they also are not necessarily words that would be exclusively associated with a website sponsored by the Complainant.
UDRP panels have looked to circumstances beyond the disputed domain name itself to assess claims of fair use for a criticism site (see id., sections 2.5.2, 2.5.3, 2.6). Here, the Respondent’s website is by all appearances genuinely noncommercial, and the use of the Complainant’s mark is mainly referential, on a site devoted to commentary and criticism regarding the Complainant’s proposed rate increase. There is no indication in the record that the website commentary and call for Internet users to contact the Complainant, the regulator, and legislators concerning the proposed rate hike is designed to advantage a competitor or serves as a pretext for unrelated commercial marketing. (The Respondents have stated political viewpoints, and the Respondent Ozean Media is a for-profit consultancy, but Ozean Media does not advertise or identify itself on the Respondent’s website and the Respondents do not compete commercially with the Complainant.) As noted in the WIPO Overview 3.0, section 2.5.3, “Panels also tend to look at whether a response is filed (and the credibility thereof), whether the respondent provides false contact information or engages in cyberflight, and whether the respondent has engaged in a pattern of trademark-abusive domain name registrations”. Those factors are not present here. This is not an instance of cyberflight and there is a credible Response. The Respondents have not been linked to a “pattern” of trademark abuse. The Respondent CRS is identified in the videos on the Respondent’s website, and the Florida Respondent Mr. Patton, Ozean Media articulated reasons for using a domain privacy service. (The Panel does not find it necessary to determine whether their fears of retaliation are factually well grounded, only that their motivations are plausible.)
The decisions reported in the WIPO Overview 3.0, section 2.6 specifically on “criticism sites” similarly emphasize whether the respondent’s criticism is “genuine and noncommercial” or whether the site is being used as “a pretext for cybersquatting, commercial activity, or tarnishment”. The Respondent’s website here is clearly a genuine criticism site.
Reverting to the fundamental fairness issue, however, the question is whether the Respondents use the Domain Name in such a manner as to falsely suggest affiliation with the Complainant. The Domain Name itself is comprised of the Complainant’s trademark plus arguably ambiguous terms, rather than derogatory or clearly critical terms, so the Domain Name does not negate an implication of source or affiliation. And while the Respondent’s website is by all appearances noncommercial, it avoids clearly identifying the website operator and not only makes referential use of the FPL word mark (and the Complainant’s design logo or a similar logo) but also uses the potentially misleading term “official” twice on the landing page (which is in the Panel’s view somewhat ill-advised, albeit not determinative of the issue at hand). Set against those facts are the plainly critical texts on the landing page and the videos displaying the name and logo of CRS, which indicate non-affiliation with the Complainant. The Respondents walk a fine line between using the Complainant’s marks to intimate that they are making “official” announcements from the Complainant and presenting criticism of the Complainant’s rate proposals.
On this record, the Panel finds that the Respondents’ use of the Domain Name represents a fair use for a legitimate criticism site. While strictly speaking the Panel need not address the Respondent’s arguments about the (highly limited) context of exclusively United States parties involving free speech cases and the references to WIPO Overview 3.0, section 2.6.2 as the disputed domain name here is not identical to the Complainant’s mark, the Panel does note the subsequent seminal case of Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633 in which the panel found that “the time has come to support the developing consensus around the impersonation test, even for cases, like the one here, between United States parties and with a United States panelist and where the location of mutual jurisdiction is in the United States. Significantly, the WIPO Overview 3.0’s impersonation test does not bar registrants from using a domain name that contains a trademark plus an additional, distinguishing term. Registrants remain free to select such a domain name so long as the domain name makes clear that the registrant is not affiliated with or authorized by the trademark holder. In the context of legitimate, noncommercial criticism websites, the most common examples of such domain names are those that append a derogatory term to the trademark name, e.g.,
The Panel concludes that the Complainant has not established the second element of the Complaint.
C. Registered and Used in Bad FaithThe Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”. None of them are apposite in this case, but the Complainant argues that the Domain Name and the Respondent’s website are misleading and create confusion as to source or affiliation, reflecting bad faith in Policy terms. However, the same facts that justify the Respondent’s claim to fair use of the Domain Name for a criticism site tend to negate a finding of bad faith in the registration of the Domain Name (as to use, see the point raised above about the use of the word “official”).
In any event, the Panel’s conclusion on the second element is dispositive of the Complaint. Thus, there is no need to reach a conclusion on the third element.
7. DecisionFor the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: October 19, 2021