Brandable domain name saved in UDRP

En-Powered Inc. d.b.a. EnPowered v. Ehren Schaiberger Claim Number: FA2003001888728

PARTIES

Complainant is En-Powered Inc. d.b.a. EnPowered (“Complainant”), represented by Mary M Cheng of Osler, Hoskin & Harcourt LLP, Canada.  Respondent is Ehren Schaiberger (“Respondent”), represented by Zak Muscovitch of Muscovitch Law P.C., Canada. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <enpowered.com>, registered with GoDaddy.com, LLC.

PANEL

Each of the undersigned certify that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Michael A. Albert, Nicholas J.T. Smith, and Nathalie Dreyfus as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 18, 2020; the Forum received payment on March 18, 2020. On March 19, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <enpowered.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On March 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@enpowered.com.  Also on March 20, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts. A timely Response was received and determined to be complete on April 13, 2020. On April 17, 2020, the Forum received Complainant’s Additional Submission, which was filed in a timely manner according to Supplemental Rule 7. On April 20, 2020, the Forum received Respondent’s Additional Submission, which was filed in a timely manner according to Supplemental Rule 7. On April 20, 2020, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Michael A. Albert, Nicholas J.T. Smith, and Nathalie Dreyfus as Panelists. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

1. Complainant

Complainant is an energy management company working in some of the largest energy markets. Complainant has rights in the ENPOWERED mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,702,374, registered Mar. 19, 2019). Complainant was established in the market and receiving media attention before the <enpowered.com> domain name’s registration.  Complainant actively used the mark in Canada since at least as early as January 4, 2015 in association with the same services as set out in the United States registration, and has actively marketed and promoted its services on a web site at <en-powered.com> since at least as early as December 4, 2014, having registered the domain name on January 25, 2014. Respondent has no rights or legitimate interests in the <enpowered.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely passively holding the disputed domain name that resolves to a webpage offering to sell the disputed domain name for $30,000. Respondent registered and used the disputed domain name in bad faith. Specifically, Respondent has offered the disputed domain name for sale and directly reached out to Complainant to make the offer. Additionally, Respondent is passively holding the disputed domain name.

1. Respondent

Respondent is an individual based out of Miami, Florida who is in the business of domain name trading. Respondent’s ownership of the <enpowered.com> domain name predates Complainant’s trademark registration. Additionally, Complainant does not claim common law rights and has not shown enough to establish secondary meaning. Complainant has no Canadian trademark registration because it recently abandoned its trademark application (applied for on January 1, 2018) on January 7, 2020. Respondent has rights and legitimate interests in the <enpowered.com> domain name. Specifically, Respondent’s ownership of the disputed domain name predates Complainant’s trademark registration. Respondent developed the domain name when no trademark rights existed for the purpose of later selling it when a new business entity wants to adopt that name. Complainant misapplies the precedent for offering a domain name for sale. Respondent did not register the <enpowered.com> domain name in bad faith as Respondent’s domain name predates any trademark rights of Complainant. Complainant has not shown that the disputed domain name was registered for the purpose of reselling it to Complainant specifically. It is not bad faith to respond to offers to purchase a domain name or to sell or offer to sell a domain name in which one has established rights and legitimate interests. Reverse Domain Name Hijacking Respondent alleges that Complainant is attempting to reverse domain hijack the <enpowered.com> domain name with its complaint.

1. Additional Submissions

Complainant’s Additional Submission Complainant states that it inadvertently abandoned its Canadian application for ENPOWERED, but that this does not affect its common law rights in Canada, where it is an established business and has been since inception in 2015. In response to Respondent’s allegation of reverse domain name hijacking, Complainant contends it could not have engaged in reverse domain name hijacking as it holds rights in its ENPOWERED mark and Respondent does not. Respondent’s Additional Submission Respondent contends that Complainant’s additional submission is improper because it seeks to introduce a new theory (common law trademark rights) that could have been raised in the original Complaint. Respondent requests that the Panel therefore not consider Complainant’s Additional Submission. Respondent further contends that Complainant failed to establish that the disputed domain name was registered in bad faith, which it must show to satisfy ¶ 4(a)(iii) of the Policy.  Respondent contends that he was not aware of Complainant’s purported common-law usage prior to registration of the disputed domain name.

FINDINGS

The Panel finds that Complainant has rights in the ENPOWERED mark. The disputed domain name is confusingly similar to Complainant’s mark as it contains the entirety of Complainant’s mark. Complainant has not satisfied its burden of proving Respondent has no rights or legitimate interests with respect to the <enpowered.com> domain name. Complainant has not satisfied its burden of proving Respondent registered and used the <enpowered.com> domain name in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

• the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
• Respondent has no rights or legitimate interests in respect of the domain name; and
• the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The Panel finds that Complainant has rights in the ENPOWERED mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,702,374, registered Mar. 19, 2019). Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (FORUM Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel further agrees with Complainant that Respondent’s <enpowered.com> domain name is identical to Complainant’s mark. The Panel notes that the domain name adds only the .com generic top-level domain (“gTLD”), which does not distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (“Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The Panel therefore finds that the <enpowered.com> domain name is identical to the ENPOWERED mark under Policy ¶4(a)(i). Respondent argues that its registration of the <enpowered.com> domain name in 2017 predates Complainant’s alleged rights in the mark, at least if such rights are predicated on the U.S. trademark registration (which issued in 2019 based on an application dated 2018).  Respondent argues that Complainant’s common-law trademark rights theory was improperly introduced in its supplemental submission.  The Panel finds that a determination of whether the additional submission was proper is not necessary to resolution of Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).

Rights or Legitimate Interests

The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services). Respondent is in the business of registering, holding, and selling domain names.  The Panel finds that this constitutes a bona fide offering of goods or services.  Moreover, Respondent is correct that his registration of the domain name pre-dates the U.S. trademark rights on which Complainant bases its Complaint.  That said, Complainant appears to have a plausible case (albeit one raised belatedly in its additional submission rather than in its Complaint) for common-law trademark rights dating back to 2015.  Even taking those rights, arguendo, as having been properly proven, however, the Panel finds that Respondent plausibly contends that it was not aware of Complainant’s trademark usage as of the date of registration.  Complainant makes no contrary showing, nor does it establish that its mark is so famous or well-known as to suggest that Respondent’s denials of knowledge are implausible.  At the relevant time, Complainant appears to have been a small business operating primarily in Ontario, Canada, remote from Respondent’s location.  Accordingly, the Panel finds Complainant has failed to meet its burden to show that Respondent lacks rights or legitimate interest in the <enpowered.com> domain name under Policy  4(c)(i).

Registration and Use in Bad Faith

As discussed above, Complainant has not sufficiently established that Respondent was aware of Complainant at the time of registration – although the Panel notes that Respondent may well have been aware of some entities that might have had rights predating his own prior to the domain name.  Nevertheless, Complainant fails to meet its burden. Complainant further points to Respondent’s alleged offer to sell the domain name.  But offers to sell a domain name are not ipso facto evidence of bad-faith. If they were, domain name transactions could never occur.  Moreover, Respondent states, and the record seems to support, that it was Complainant, rather than Respondent, that first proposed a purchase of the domain name here.  That fact (which the Panel finds to be more probable than not from the present record) further undermines Complainant’s claim of bad faith. In sum, the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).

REVERSE DOMAIN-NAME HIJACKING

Respondent alleges that Complainant has engaged in reverse domain-name hijacking by initiating this dispute, attempting to deprive Respondent, the rightful, registered holder of the <enpowered.com> domain name, of its rights to use the disputed domain name. The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).  Moreover, Complainant appears to have been doing business under the disputed mark for about two years prior to the domain name registration.  While some of the Complainant’s other allegations are on shaky ground, there is insufficient basis in the record for the Panel to conclude that the Complaint was filed without any good faith basis or reasonable prospect of success. The Panel therefore declines Respondent’s request to declare that Complainant filed the Complaint in an attempt at Reverse Domain Name Hijacking.  See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).

DECISION

Complainant having failed to establish two of the three elements required under the Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <enpowered.com> domain name REMAIN WITH Respondent.