Complainant is Eneco BV of Rotterdam, Netherlands, represented by Novagraaf Nederland B.V., Netherlands.
Respondent is Eneco of Salt Lake City, Utah, United States of America (“U.S.”).
The disputed domain name <eneco.com> is registered with Network Solutions, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2010. On April 12, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On April 12, 2010, Network Solutions, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed a first amendment to the Complaint on April 23, 2010. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed a second amendment to the Complaint on April 27, 2010. The Center verified that the Complaint together with the amendments to 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on May 19, 2010.
The Center appointed Ross Carson, Dinant T. L. Oosterbaan and Douglas M. Isenberg as panelists in this matter on June 25, 2010. 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.
Complainant was formed in 1995 by the amalgamation of three energy companies. Complainant has more than 7,000 employees and is one of the largest companies in the Netherlands in the energy field. Complainant serves more than 2,000,000 (two million) clients in the Netherlands, and its trademarks for or including ENECO are well-known in the Netherlands.
Complainant is the owner of numerous trademarks for or including ENECO and has used the trademark ENECO in the energy field in the Netherlands since at least as early as 1994. Complainant is the owner of the following Benelux trademark registrations for ENECO: No. 543290 ENECO dated January 20,1994; No. 567354 ENECO dated August 17, 1995; No. 561887 word/device mark ENECO dated December 6, 1994: No. 842299 word/device mark ENECO in color, dated February 20, 2008; No. 842298 word/device mark ENECO dated February 20, 2008. Complainant is also the owner of international registration number 644517 ENECO dated September 11, 1995.
Complainant submits that the disputed domain name <eneco.com> is identical to Complainant's registered word marks for ENECO and to the company name Eneco B.V. (Complainant) and highly similar to further company names and trademarks of Complainant.
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name in connection with a bona fide offering of goods and/or services.
Complainant states that Respondent, the holder of the disputed domain name <eneco.com>, was approached on January 14, 2010, by Complainant's agent with a request as to whether Respondent was interested in assigning the disputed domain name, without any success. A follow up reminder letter forwarded on February 9, 2010 by mail also failed to elicit a reply. Complainant consulted its U.S. associates who informed Complainant that according to the records of the Utah Department of Commerce the last annual renewal of Respondent's corporate status was in April 2007. Complainant attached as an annex to the Complaint a copy of the Business Entity Search for Respondent, in which documents from the records of the Utah Department of Commerce disclosed that Respondent's status had expired on June 6, 2008, for failure to file renewal. Complainant further states that there is no web page associated with the disputed domain name.
Complainant further submits that as Respondent has not been active at all for several years, Respondent clearly does not have any rights or legitimate interests in respect of the disputed domain name in connection with a bona fide offering of goods and/or services.
Complainant further states that before any notice to Respondent of the dispute, there is no evidence of Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Complainant states that to its knowledge, Respondent (as an individual, business, or other organization) has not been commonly known by the disputed domain name nor has there been any evidence or indication whatsoever that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Complainant submits that Respondent should have been aware of Complainant's trade name and trademarks, or at least of its presence in the market of energy. Without any doubt Complainant's name ENECO appears widely and heavily on the Internet. As the name ENECO is an invented name, it seems questionable that Respondent had no idea of the existence of Complainant's name ENECO. Search engine including direct Internet users looking for “Eneco” to Complainant's website or websites directly related to Complainant. Respondent must have been aware of Complainant's use of ENECO.
Complainant states that, by using the disputed domain name, Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The disputed domain name has been registered in order to prevent Complainant from reflecting this name in a corresponding domain name.
The disputed domain name has not been used by Respondent in a relevant way from the date of registration. In addition, searches revealed that the disputed domain name/website has not been in use since at least 2007. Complainant stresses the fact that no renewal of Respondent's registration as a corporation at the State of Utah Department of Commerce has been made since 2007.
Respondent did not reply to Complainant's contentions.
Paragraph 15(a) of the Rules instructs this Panel to “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.”
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:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has established that it is the owner of numerous Benelux trademark registrations for or including ENECO, the earliest registration number 543290 having a registration date of January 20, 1994. Complainant's registrations are described in more detail in paragraph 4 above. At least three of Complainant's registrations predate the creation date of the disputed domain name of March 5, 2000, by many years.
The disputed domain name incorporates the entirety of Complainant's ENECO trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant's trademark where the disputed domain name incorporates complainant's trademark in its entirety. See eBay, Inc. v. Progressive Life Awareness Network, WIPO Case No. D2001-0068 (finding that the domain name <gayebay.com> incorporated complainant's mark in its entirety and holding it to be confusingly similar to complainant's EBAY mark); Auxilium Pharmaceuticals, Inc. v. Kumar Patel, NAF Claim No. 642141, (finding <auxilium-pharmaceuticals.com> confusingly similar to complainant's AUXILIUM name and mark); MasterCard International Incorporated v. ZJ, WIPO Case No. D2007-0687 (finding confusing similarity and ordering the transfer of the domain <platinummastercard.com> to Complainant).
The inclusion of the top level domain “.com” in the disputed domain name does not affect a finding of confusingly similar. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org,” “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has proven that the disputed domain name comprised of Complainant's trademark ENECO and the top level domain “.com” is confusingly similar to Complainant's trademarks for and including ENECO.
Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Many of the facts relevant to the determination of this element are also relevant to the element titled Registered and Used in Bad Faith. In order to avoid repetition the Panel will proceed with consideration of Registered and Used in Bad Faith.
Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the disputed domain name has been registered and is being used in bad faith.
According to Internic, the disputed domain name <eneco.com> has a creation date of March 5, 2000. The Registrar's WhoIs information shows that the disputed domain name Record was created on March 3, 2004. This discrepancy in dates is irrelevant to the Panel's decision in this proceeding.
Complainant's submission on the issue of registration in bad faith is that the name ENECO is an invented name. Complainant also submitted that it seems questionable that Respondent had no idea of the existence of Complainant's use of ENECO as entering ENECO on Internet search engines at the date of creation of the disputed domain name would have disclosed Complainant's ENECO website or related websites.
The Registrar's WhoIs information for <eneco.com> shows the Registrant of the disputed domain name as Eneco, Salt Lake City, UT, US. The Administrative Contact, Technical Contact is: Eneco, Salt Lake City, UT, US. The case record provided by the Center shows that Complainant and the Center were unable to contact Respondent or Respondent's Administrative Contact or Technical Contact at the email address or telephone numbers shown in the Registrar's WhoIs information. The Center records also disclose that United Parcel Service, a courier company, was unable to deliver the Complaint to Respondent at Salt Lake City, Utah, U.S. as Respondent had moved.
Complainant filed as part of its evidence a copy of a Business Entity Search of the State of Utah, Department of Commerce dated April 12, 2010, relating to Respondent, Eneco, Inc. The Business Entity Search shows the Registration Date of Respondent as a corporation was March 6, 1991. The address of Respondent corporation is shown as Salt Lake City, UT. The Business Entity Search shows an individual having the same address as Respondent as the Registered Agent of Respondent. The Business Entity Search shows the status of Respondent corporation as “Expired” for “failure to File Renewal” on June 10, 2008.
The Panel has no jurisdiction to inquire into the disposition of assets of expired companies or corporations in the State of Utah. The Panel does have jurisdiction to determine if the disputed domain name was registered in bad faith. See, Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756 (“the legislative history of the Policy indicates that it was promulgated to tackle egregious cases of cybersquatting, leaving other disputes to the court for resolution”).
A search of <eneco.com> on the Internet Archive Wayback Machine at “www.archive.org”1 provided copies of numerous webpages of Eneco in the period between 2002 and 2008 relating to high-efficiency semiconductor technology for heat-to-electricity converters and solid state heat pumps. Some webpages disclosed the United States Trademark Registration identifier comprised of the letter “R” in a circle. The entry of “eneco” as a search term in the United States Patent and Trademarks Office database disclosed Respondent as the registered owner of United States Trademark Registration Number 1963651 on the Principal Register for the trademark ENECO applied for on September 14, 1993 and registered on March 26, 1996 in relation to licensing of intellectual property rights respecting clean energy.
The Panel finds that Respondent Eneco, Inc. was registered as a corporation on March 6, 1991 based on the information of the State of Utah, Department of Commerce, Business Entity Search and part of the record in this case. The 1991 corporate registration date receives proximate time support from Respondent's United States Trade Mark application for ENECO applied for in 1993 in the name of Eneco, Inc. and registered in 1996 in the name of Eneco, Inc.
Respondent having registered a corporation under the name Eneco, Inc. in 1991 and carried on business under that name prior to Complainant's evidence of use of, application for and registration of its Benelux and other trademarks for or including ENECO was not involved in the abusive registration of the disputed domain name <eneco.com>.
The Panel finds that Complainant has failed to prove that Respondent registered the disputed domain name in bad faith.
Having concluded that Complainant failed to prove that Respondent registered the disputed domain name in bad faith, the Panel need not consider the element of use of the disputed domain name in bad faith. (See, Donald J. Trump v. eStore of New York, WIPO Case No. D2007-0119).
For all the foregoing reasons, the Complaint is denied.
Dinant T. L. Oosterbaan
Douglas M. Isenberg
Dated: July 7, 2010
1 The Wayback Machine has been described as “a reputable source for tracking the history of some content on the Internet.” Pfizer Inc. v. Bharat Gohil, WIPO Case No. D2005-1290. Further, the panel may also “undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5.