ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION WEC Energy Group, Inc. v. Kelly Barr Case No. D2024-4411 1. The Parties Complainant is WEC Energy Group, Inc., United States of America (“United States”), represented by Quarles & Brady LLP, United States. Respondent is Kelly Barr, United States. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2024. On October 29, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Redacted For Privacy by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to Complainant on October 30, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 30, 2024. 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 Respondent of the Complaint, and the proceedings commenced on October 31, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 21, 2024.
page 2 The Center appointed Timothy D. Casey as the sole panelist in this matter on November 27, 2024. 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 Complainant is a large electric generation and distribution company servicing consumers in the mid-west United States, including Wisconsin, Illinois, Minnesota, and Michigan. Complainant first began using WEC ENERGY GROUP as a mark for energy production and transmission development and public utility services in June 2015, and owns the following registration (the “WEC ENERGY GROUP Marks”) as follows: Mark Jurisdiction Class(es) Registration No. Registration Date WEC ENERGY GROUP United States 37, 39 5087530 November 22, 2016 The disputed domain name was registered on August 27, 2024. Complainant provided evidence indicating that the disputed domain name was utilized, on the same date the disputed domain name was registered, in numerous emails impersonating an employee of Complainant and falsely indicating Complainant’s interest in purchasing products from various vendors. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, Complainant contends that it has rights in the WEC ENERGY GROUP Marks and that the disputed domain name is confusingly similar to the WEC ENERGY GROUP Marks because the WEC ENERGY GROUP Marks are fully incorporated into the disputed domain name. Complainant notes that the disputed domain name includes an additional letter “s” after “energy” that does not change the overall impression of the disputed domain name and only serves to increase the likelihood of confusion associated with the disputed domain name. Complainant contends Respondent registered the disputed domain name nine years after Complainant first began using the WEC ENERGY GROUP Marks and is not licensed or otherwise authorized to use the WEC ENERGY GROUP Marks. Complainant contends Respondent is not commonly known as “WEC Energys Group” and has no rights or legitimate interests in the disputed domain name because Respondent has used the disputed domain name to impersonate an employee of Complainant to send illegal emails intending to defraud Complainant’s vendors. Complainant contends that bad faith registration is evident from the fact that the disputed domain name uses the WEC ENERGY GROUP Marks to impersonate an employee of Complainant in an attempt to defraud Complainant’s actual and potential vendors. Complainant contends that Respondent intentionally registered the disputed domain name so it would be confused with the WEC ENERGY GROUP Marks and the additional letter “s” in the disputed domain name would be easily overlooked. Complainant further contends that Respondent’s use of the disputed domain name to impersonate Complainant and to attempt to defraud Complainant’s vendors trades off the goodwill associated with the WEC ENERGY GROUP marks and attempts to mislead Complainant’s vendors. Finally, Complainant notes that Respondent used a privacy service to mask Respondent’s identify and contact information when registering the disputed domain name, which further infers bad faith registration and use.
page 3 B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s WEC ENERGY GROUP Marks and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The mark is recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the WEC ENERGY GROUP Marks for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The addition of the letter “s” is a misspelling of Complainant’s Mark , however it does not prevent a finding of confusing similarity between the disputed domain name and the WEC ENERGY GROUP Marks for the purposes of the Policy. WIPO Overview 3.0, section 1.9. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Panels have held that the use of a domain name for illegal activity, here, claimed impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established.
page 4 C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that Respondent must have known of Complainant’s WEC ENERGY GROUP Marks at the time of registration as there is no other reasonable explanation as to why the disputed domain name is essentially the same as the WEC ENERGY GROUP Marks. Respondent’s use of the disputed domain name on the same day it was registered to engage in multiple impersonations of Complainant’s employee in order to attempt to defraud Complainant’s vendors is further proof of bad faith registration and use. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have held that the use of a domain name for illegal activity, here, claimed impersonation/passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that Complainant has established the third element of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant. /Timothy D. Casey/ Timothy D. Casey Sole Panelist Date: December 11, 2024
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