WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reliant Energy, Inc. v. Robert Wiggins
Case No. D2001-0769
1. The Parties
Complainant is Reliant Energy, Inc., a Texas corporation with its principal place of business in Houston, Texas, USA.
Respondent is Robert Wiggins, an individual residing in Houston, Texas, USA.
2. The Domain Names and Registrar
The domain names at issue are: <reliantenergyarena.com> and <reliantcenter.com> ("the Domain Names").
The registrar is Network Solutions, Inc., located in Herndon, Virginia, USA ("the Registrar").
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Policy") and the ICANN Rules of Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Rules").
The Complainant was submitted by e-mail on June 8, 2001, and in hardcopy on June 12, 2001. A Request for Registrar Verification was sent by the Center to the Registrar on June 12, 2001, and verification was received on June 13, 2001.
Having verified that the Complaint was in compliance with the Policy, the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"), the WIPO Arbitration and Mediation Center ("the Center") transmitted to the Respondent a Notification of Complaint and Commencement of Administrative Proceeding on June 15, 2001.
The Response was received by e-mail on July 4, 2001 and in hardcopy on July 10, 2001.
On July 24, 2001, the Center appointed Mark V. B. Partridge as panelist.
4. Factual Background
Complainant is an international enterprise engaged in energy generation and distribution and public utility services in the United States, South America, and Europe. It is the sole provider of electricity and natural gas in Houston, Texas.
Complainant changed its name from Houston Industries to Reliant Energy in February 1999. This change was the subject of a substantial advertising campaign and significant media attention. Beginning in January 1999, Complainant has applied to register the RELIANT ENERGY mark in various countries. Registration has been issued in several countries, including Bolivia, Chile, Colombia, El Salvador, Guatemala, Honduras, Mexico, New Zealand, Panama, Peru, Tangier and Venezuela. Its applications for registration are pending in the United States. At least two of those applications have been suspended for undisclosed reasons.
In late 1999 and early 2000, the Texas press reported on many occasions that Complainant was beginning negotiations for the right to rename the Houston Astrodome.
Respondent is employed as a television engineer. He operates various web sites as a hobby, including <texasairports.com>, <texaswaterparks.com> and <visitinghouston.com>.
Respondent registered the Domain Names on June 28, 2000.
Before notice of Complainant's objection, the Domain Names routed Internet users to a web page at <vosot.com/houston.html>, a site operated by Respondent as <visitinghouston.com> to provide local travel, entertainment and business information.
After notice of the dispute, <reliantenergyarea.com> resolved to a blank web page. The domain name <reliantcenter.com> directed users to a web page at <vosot.com/rc>. The site has the caption <reliantcenter.com> and includes the statement "This web site is privately funded for free public access to THE sources of information." That statement is followed by links to various sources of public information, e.g., F.A.A. Aeronautical Information Manual, C.I.A. Electronic Document Center and U.S. Naval Observatory.
5. Parties' Contentions
Complainant contends that the Domain Names are confusingly similar to its mark, that Respondent has no rights or legitimate interests in the Domain Names, and that Respondent has registered and used the Domain Names in bad faith.
Respondent claims that Complainant lacks rights in the Domain Names. In addition, Respondent maintains it has a legitimate interest in the Domain Names and was not acting in bad faith because it intended to make fair use of the domain names, in the manner shown by its <visitinghouston.com> site.
This is a troubling case. It is clear that Respondent registered the Domain Names because Complainant had begun negotiations to rename the Astrodome. Although one is reluctant to condone such conduct, we are constrained in this proceeding by the terms of the Policy which places the burden on Complainant to show some intended commercial gain or effect to establish bad faith. As more fully discussed below, because Complainant has not shown such intent and Respondent has provided evidence to show that he is a hobbyist who intends to make noncommercial use of the Domain Names, I conclude that Complainant has not established a violation of the Policy.
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and used in bad faith.
A. Confusing Similarity
Although Complainant's mark is not supported by a U.S. registration, Complainant has presented sufficient evidence to demonstrate rights in the mark RELIANT ENERGY based on use and foreign registration. These rights predate registration of the Domain Names.
The domain name <reliantenergyarena.com> fully incorporates Complainant's mark. The addition of "arena" is likely to increase the likelihood of confusion with Complainant given the publicity associated with negotiations to rename the Astrodome. The domain name <reliantcenter.com> incorporates the salient portion of Complainant's mark. Although RELIANT is a common word used by third parties, a likelihood of confusion with Complainant is present because (1) Respondent has used the domain name in connection with information about Houston where Complainant is the public utility for natural gas and electricity; and (2) Respondent selected the domain name because Complainant was engaged in negotiations to rename the Astrodome.
Based on the circumstances surrounding Respondent's selection and intended use of the Domain Names, I find that the names are confusingly similar to a mark in which Complainant has prior rights.
B. Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).
Here, Respondent has not used the domain names in connection with a bona fide offering of goods or services or provided a demonstrable plan to do so. Further, Respondent is not known by the Domain Names. Respondent instead contends that he registered the Domain Names for bona-fide non-commercial and fair use.
Fair use arises when a term is used "otherwise than as a mark" and "is descriptive of and used fairly and in good faith only to describe the goods or services" of the user. 15 U.S.C. 1115(b)(4). The record submitted here shows that Respondent never used the Domain Names for an independent web site prior to notice of the dispute. Instead, the Domain Names routed users to Respondent's site <visitinghouston.com>. Such use appears to be an effort to attract Internet users to Respondent's site, and is not an effort to describe fairly the contents of the site in a manner that would constitute fair use. Respondent's subsequent use of the domain name <reliantcenter.com> to provide information links unrelated to the name of the site similarly does not qualify as fair use of the name to describe the contents of the site.
In addition, neither Domain Name appears to have been put into use for any "legitimate noncommercial" purpose. Respondent would not have registered the Domain Names but for their confusing similarity with Complainant's mark. Registering a domain name with knowledge that it corresponds to the well-known trademark of another and using the domain name to redirect traffic to another site should not be viewed as "legitimate" noncommercial use under Paragraph 4(c); otherwise, the Policy could easily be avoided by cybersquatters.
I find that Respondent lacks any right or legitimate interest in the Domain Names. Next, we consider in more detail the different but related question of whether Respondent has made bad faith commercial use of the Domain Names.
C. Bad Faith
In addition to showing confusing similarity and a lack of legitimate interest, Complainant must demonstrate bad faith registration and use. The Policy lists several circumstances that are indicative of bad faith. Policy 4(b).
Here, there is no evidence that Respondent has offered to sell the domain name for profit or that Respondent registered the Domain Names to disrupt the business of a competitor.
Complainant contends that Respondent is a cybersquatter because he engages in a pattern of conduct involving the unauthorized registration of domain names that correspond to the names of others. Respondent has presented evidence to rebut that assertion, showing in each case that the name involved belongs to a friend or to another person who consents to Respondent's registration of the domain name. Thus, although the domain name registrations at issue prevent Complainant from having the corresponding domain name, there does not appear to be a pattern of such conduct as required under Paragraph 4(b)(ii) of the Policy.
The more difficult question arises under Paragraph 4(b)(iv) which provides that the following is evidence of bad faith registration and use:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site. . ."
Here, the evidence shows that Respondent deliberately selected the Domain Names to attract Internet users to his web site based on confusion with Complainant's mark as to the sponsorship or affiliation of the web site. However, there is no showing by Complainant that Respondent has done this for commercial gain. Respondent argues that his intended purpose is noncommercial. This claim is corroborated by his existing web site, which appears to be the effort of a hobbyist to provide local tourist information without commercial intent or effect. There is no evidence that his intended purpose is a sham designed to circumvent the Policy.
The circumstances outlined in Paragraph 4(b) of the Policy are intended as examples, not an exhaustive list of factors for determining bad faith. In some cases, other activities have been viewed as bad faith. For example, passive holding of domain names corresponding to another's mark supported a finding of bad faith in Lake Las Vegas Joint Venture v. M. Bridges and Third Party Protection, Investigations and Consultants, WIPO Case No. D2001-0226, and Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In both cases, the Respondent failed to participate in the proceeding. As a result, there was no evidence to that the domain names would be used for a noncommercial purpose. Moreover, in Telstra, additional evidence of bad faith include false and misleading contact information, further indicating that the registrant had no intent to make legitimate use of the domain name.
Here, similar evidence of bad faith is not present. Respondent has not been evasive, but instead has participated diligently in this proceeding by offering evidence that he is not a cybersquatter, but rather a hobbyist who enjoys creating and managing a noncommercial web site about Houston. This is an important difference from those cases that base bad faith on passive holding. Without the existence of a legitimate, noncommercial site about Houston, I would be reluctant to give weight to Respondent's claim that he intends to use the Domain Names for a noncommercial purpose. His claim carries weight here because it is corroborated by the other evidence presented, the totality of which indicates that Respondent is not acting in bad faith.
Complainant is wrong that bad faith is established merely because Respondent knew of Complainant's interest in the marks. Trademark rights do not create an absolute monopoly and therefore more than knowledge must be shown to prove bad faith. I agree with Complainant that Respondent registered the Domain Names because of the media speculation that Complainant would sponsor a professional sports facility in Houston. I also agree with Complainant that Respondent knowingly registered the Domain Names to direct traffic to his own sites based on confusion with Complainant. Complainant, however, has failed to prove that Respondent does this for commercial gain. In contrast, Respondent has presented evidence to show that his purpose is non-commercial, although, as discussed above, he has not yet made any legitimate noncommercial use of the Domain Names. Therefore, I do not believe that Complainant has established a right to relief under the Policy based on the facts presented.
Complainant previously prevailed against the domain names <reliantenergyfield.com>, <reliantenergydome.com>, <reliantenergycenter.com> and <reliantenergystadium.com>. Reliant Energy, Inc. v. Brent Graeter, WIPO Case No. D2001-0246. As here, the domain names were confusingly similar and the Respondent lacked any legitimate interest. In that case, however, bad faith was found because the Respondent had posted an offer to sell the Domain Names on the Internet, "a classic instance of bad faith." There is no similar evidence here.
The Panel concludes that Complainant has failed to show bad faith registration and use of the Domain Names <reliantenergyarena.com> and <reliantcenter.com>. Therefore, Complainant's request for transfer is denied.
Mark V. B. Partridge
Dated: August 27, 2001