WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nextera Energy, Inc. v. Domains By Proxy, LLC/ Andriy Godovanets
Case No. D2013-2133
1. The Parties
The Complainant is Nextera Energy, Inc. of Juno Beach, Florida, United States of America (“United States”), represented by Boies, Schiller & Flexner LLP, United States.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States/ Andriy Godovanets of Ivano-Frankivsk, Ukraine, represented internally.
2. The Domain Name and Registrar
The disputed domain name <nexteratrading.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2013. On December 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on December 11, 2013 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 December 16, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2014. The Response was filed with the Center on January 25, 2014.
The Center appointed James A. Barker as the sole panelist in this matter on February 6, 2014. 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
The Complainant is a clean energy company with more than 42,000 megawatts of generating capacity, and nearly 15,000 employees in 26 states and Canada as of year-end 2012. The Complainant was named No. 1 overall among electric and gas utilities on Fortune’s 2013 list of the “World’s Most Admired Companies”. The Complainant is ranked 172 on Fortune magazine’s 2012 Fortune 500 list of America’s largest corporations.
The Complainant refers to an email that it sent to the Respondent on October 28, 2013 (although this email was, it appears, sent to a registrar of domain names that was neither the actual Respondent, nor the Registrar in this case). After the filing of the Complaint, and confirmation of the registration details for the actual registrant of the disputed domain name, the Respondent sent an email to the Center on December 16, 2013. In that email, the Respondent stated that:
“I am writing this letter to inform you that Nextera Trading, company registered in Belize, in business since 2012, website nexteratrading.com is a privately held firm specializing in providing service for equities traders. The company does business exclusively outside of North America and has nothing to do with renewable energy or providing any services similar to a US based Nextera Energy Inc. Please take into consideration the fact that Nextera Trading has a registered domain, its own logo and never pretended to show any similarities or competed for the same client base as Nextera Energy. We feel strongly that any attempts of representatives of Nextera Energy to force us to give up the nexteratrading.com domain have no merit or fundamental reasoning. We are open to any discussions with Nextera Energy representatives regarding this domain and their concerns.”
In its response to the Center, the Registrar has confirmed that the “creation date” for the disputed domain name was March 13, 2012. In the absence of evidence to the contrary, the Panel has treated this date as the effective registration date of the disputed domain name by the Respondent.
5. Parties’ Contentions
The Complainant claims that its goods and services are well-known throughout the United States. It has continuously and extensively used the name and mark NEXTERA since at least 2008 in national advertisements, the Internet, and in unsolicited press mentions such as Fortune Magazine’s “World’s Most Admired Companies”. The NEXTERA Marks have been used in commerce in connection with a number of services, from energy production and utility services, to business management and consulting, charitable services, and trading in energy and related futures and derivatives. The Complainant also uses its marks in domain names to identify itself on the Internet (including but not limited to <nexteraenergy.com> and <nexteraenergyresources.com>). In addition to claiming common law rights, the Complainant provides evidence of its ownership of a mark for NEXTERA on the principal register of the United States Patent and Trademark Office (USPTO).
The Complainant claims that the disputed domain name is confusingly similar to its mark, and that Internet users would assume that the disputed domain name is connected to it, in light of the renown of its marks and registrations. The website at the disputed domain name features use of the name “nextEra trading, LLC”. The capitalization of the internal “E” within the word “nextEra” is identical to that in the Complainant’s NextEra mark. The Respondent’s website also features a logo that emulates the distinctive zig-zag line inside a circle design of NextEra’s logo which is protected by federal trademark registrations.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain names. There is no evidence of the 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. Respondent has not been commonly known by the name “NextEra”. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, and is instead using the domain name to misleadingly divert consumers, or to tarnish the Complainant’s marks. The Respondent’s website provides no address or place of business for “nextEra trading LLC”; the only method of communication with the purported business is through electronic request for contact via the website. The Respondent has used the Complainant’s mark without its consent.
The Respondent operates the website at the disputed domain name <nexteratrading.com> for commercial gain. The website offers for sale monthly use of a trading platform. The Complainant claims that the Respondent receives compensation based on the monthly usage by visitors to the site. The Respondent’s use cannot be characterized as fair use. Searchers for the Complainant’s services and information about NextEra who used the disputed domain name would think they were visiting a Complainant’s site until they discovered that they were viewing options for day trading. Such use cannot be considered fair.
In relation to bad faith, the Complainant claims that the Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location of a product or service on the Respondent’s website or location. The Complainant says that the Respondent initially attracts searchers to its website by using the Complainant’s mark in its domain name, thereby making the searchers think that they are being linked to Complainant’s site. Even if searchers discover they are not at the Complainant’s site, searchers may be led to believe that NextEra endorsed, sponsored or affiliated itself with the services offered at the Respondent’s website.
The Respondent claims that, while the Complainant NextEra Energy is a primary clean energy provider to the business and households in the Unites States, the Respondent is a company that provides services for proprietary traders outside of continental United States and its focus is stock market rather than renewable energy. The Respondent doesn’t produce any goods or offer any similar services in the same arena or similar market place to the Complainant.
The Respondent denies that it infringes any copyright or trademarks of the Complainant, and denies confusion between the disputed domain name and the Complainant’s mark. The Respondent compares this claim to one of confusion between “Apple Inc” (company started by Steve Jobs) and “Pineapple Inc.” (Employment agency in Los Angeles). The only similarities between them are that both companies use the word “apple” and both offices are headquartered in California.
The Respondent says that its capitalization of the word “Era” is only used to capitalize the word “Era”, and that there is nothing more to it. The Respondent says that there are absolutely no similarities between two logos (NextEra energy and nextera trading). The Respondent says that it has been known in the day trading community all over the world as “nextera trading”, not as NextEra or NextEra Energy. The Respondent says that the customers of the Complainant cannot possibly confuse the Respondent with the Complainant because it has not received any requests for information or services of the Complainant. The Respondent says that it does not get “paid per click” and the only reason it forwards information submitted by interested potential clients on the “contact us form” to “[…]@nexteratrading.com” is to direct him/her to the right department within the company. The Respondent says that it works in close partnership with “Global Trading Plus LP”, a world-wide known company that has been a strategic partner of Nextera trading for few years. The Respondent says that its traders use services of such reputable companies as “Acquire Media”, “T3 Live” and “Esignal”- all multimillion dollar companies with an impeccable reputation in financial industry.
The Respondent says that it tried to reach out to the Complainant with an offer to sell the disputed domain name, and says that it strongly believes that there are clearly no justifiable grounds for giving the Complainant the disputed domain name without the Respondent’s consent and agreement for such action.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
In considering these elements, the Panel notes that neither party provided strong evidence of its case. The Complainant provided evidence of its trademark rights, and limited evidence of the reputation of its mark. The Respondent provided no direct evidence to support its claims.
A. Identical or Confusingly Similar
The first matter which the Complainant must demonstrate is that the disputed domain name is identical or confusingly similar to a mark in which the Complainant has rights. The Complainant has demonstrated that it has registered rights in its NEXTERA trademark. The issue then is whether the disputed domain name is confusingly similar to that mark.
It is well-established that the “.com” extension is not relevant for the purpose of determining this question, because it is a necessary and functional element of the domain name. As such, the only relevant difference between the Complainant’s mark and the disputed domain is the addition of the descriptive word “trading”.
The addition of generic words to a mark has been considered in a large number of decisions under the Policy. A summary of WIPO UDRP panel opinion that is relevant to these past decisions, set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), relevantly provides as follows:
“The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name. The principal exception that some panels have found in certain cases is where a trademark (especially one of a descriptive nature) is incorporated or subsumed within other words or textual elements so that the trademark is not clearly the dominant component of the domain name.”
Following this approach, the Panel considers that the addition of the word “trading” in this case is not sufficient to avoid a finding of confusing similarity. The Complainant’s registered mark is wholly incorporated in the disputed domain name. It is also the first-appearing element. While the Complainant’s mark is comprised of descriptive terms, it is registered on the principal register of the USPTO and, as such, entitled to a presumption of distinctiveness. Further, other UDRP panels which have considered the addition of the word “trading” to a distinctive and registered mark, which itself comprises a descriptive term, have found that this addition may not avoid confusing similarity. See e.g. Virgin Enterprises Limited v. Bill Chronarakis, Vkhv Pty, Ltd., WIPO Case No. D2013-0140. In this case, the addition of the word “trading” in the disputed domain name may serve to increase confusion, by creating the misleading impression that the disputed domain name is associated with “trading” that relates to the Complainant’s goods or services.
For these reasons, the Panel finds that the Complainant has established this first element.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden shifts to the Respondent to rebut it. This shifts the burden to Respondent to show by concrete evidence that it has rights or legitimate interests in the disputed domain name. See, e.g., Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. “‘Concrete evidence’ constitutes more than mere personal assertions…Evidence in the form of documents or third party declarations should be furnished in support of such assertions”. Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
In this case, the Complainant has presented a prima facie case against the Respondent. Against this, the Respondent implies that it has rights or legitimate interests in the disputed domain name, based on its business of on-line trading which it suggests is conducted reputably in partnership with reputable industry organizations.
The nub of the Complaint’s argument is that the Respondent registered the disputed domain name to exploit its trademark value associated with the Complainant’s mark. The Respondent does not explicitly rebut this claim - but says that it operates in a different market to the Complainant and that there is no likelihood that Internet users will be confused between the disputed domain name and the Complainant’s mark.
Faced with these contrasting claims, the Panel must choose between the evidence of the Complainant and that of the Respondent. While the Complainant could have provided more evidence (particularly considering the extent of its claimed reputation), the Panel prefers the Complainant’s account to the Respondent’s. The Respondent’s counterclaim is not supported with any direct evidence. The only evidence supporting the Respondent’s case is that which is indicated from the Respondent’s website (provided in the Complaint). However, this does not indicate how the Respondent’s trading name was derived. The WhoIs details for the disputed domain name suggest that it has been registered for less than two years. In contrast, while the Complainant’s evidence was not extensive, it is sufficient to indicate that the Complainant has a substantial reputation in North America, close to Belize where the Respondent (in earlier correspondence to the Complainant) claims to have registered its business. In these circumstances, the Panel has inferred that the Respondent’s choice of the disputed domain name was motivated, at least in part, by an attempt to exploit the value of the Complainant’s mark. Such a use cannot form a basis for a right or legitimate interest.
For these reasons, the Panel finds that the Complainant has established this second element.
C. Registered and Used in Bad Faith
Bad faith may be demonstrated where the evidence indicates that the Respondent registered and used the disputed domain name primarily with a view to taking unfair advantage of the Complainant’s registered trade mark rights and reputation. See, e.g. SingTel Optus Pty v. Xnet, WIPO Case No. D2004-0734.
It is undisputed that Respondent has been using the disputed domain name since about March 2012, well after the earliest registration of the Complainant’s mark in 2009. Considering those facts and Complainant’s evidence of its extensive business, it is reasonable to infer that Respondent had some knowledge of Complainant’s rights in its marks when it registered and then used the disputed domain name. For similar reasons to those set out above concerning rights or legitimate interests, the Panel has inferred that the Respondent registered the disputed domain name to take some unfair advantage of the Complainant’s mark.
Some purported evidence in the Complaint would have further supported this conclusion: in particular, evidence which the Complainant claims of a close similarity between its logo and one appearing on the Respondent’s website. However, this evidence was provided only indirectly - within correspondence the Complainant had attempted to send to the Respondent. The Complainant did not provide direct evidence of the Respondent’s use of a similar logo on the Respondent’s website. On the other hand, the Respondent did not dispute that it has used that logo. It contended in this regard that there are absolutely no similarities between the two logos. Having compared the two logos, the Panel finds it unlikely that the Respondent achieved the degree of similarity to the Complainant’s logo by chance. The Panel considers that the evidence is sufficient to establish, for the reasons set out above, a reasonable inference that the Respondent was aware of the Complainant’s mark when the disputed domain name was first registered, and then used.
The Complainant has therefore established its case under paragraph 4(a)(iii) of the Policy.
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, <nexteratrading.com>, be transferred to the Complainant.
James A. Barker
Date: February 20, 2014