WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Infraestructura Energetica Nova, S.A.B. de C.V. v. Danny Sullivan

Case No. D2019-1942

1. The Parties

The Complainant is Infraestructura Energetica Nova, S.A.B. de C.V., Mexico, represented by Alejandro Díaz Morales, Mexico.

The Respondent is Danny Sullivan, United States of America (“United States”), self-represented.

2. The Domain Name and Registrar

The disputed domain name <ienova.com> is registered with Nameling.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2019. On August 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain name.

The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2019. The Response was filed with the Center on September 5, 2019.

The Center appointed William A. Van Caenegem as the sole panelist in this matter on September 13, 2019. 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 has registered the trademark IENOVA as such in Mexico: Registration No. 1498101 in class 41 granted on December 1, 2014; Registration No. 1596328 in class 4 granted on December 12, 2015; Registration No. 1648153 in class 4 for granted on June 21, 2016; Registration No. 1749939 IENOVA in class 35 granted on April 28, 2017. The Complainant also owns a number of compound trademarks registered in Mexico for short phrases including the term IENOVA, such as IENOVA ENERGÍA PARA MÉXICO; IENOVA GASODUCTOS; and IENOVA INFRAESTRUCTURA ENERGÉTICA UNA EMPRESA DE SEMPRA ENERGÍA PARA MÉXICO. The Complainant has not registered the IENOVA trademark outside Mexico.

The disputed domain name was registered by the Respondent on October 31, 2018.

The Respondent has offered the disputed domain name for sale on a website hosted by “dan.com” for the sum of USD 5,000. The Respondent claims to be a domain name trader and entitled to offer domain names for sale.

5. Parties’ Contentions

A. Complainant

The Complainant maintains that the disputed domain name is identical to its IENOVA trademark. Further, the Complainant says that the Respondent has no trademark rights to IENOVA, something that would be impossible in any case since only the Complainant has such rights, as attested to by its registration of IENOVA trademarks in Mexico. The Complainant affirms that it is recognized in the United States and Latin America as one of the most important companies in the energy sector in Mexico. The Complainant asserts that the Respondent is not known by the name IENOVA in the energy industry and can never become known as such because of the recognition attaching to the Complainant’s trademark in Mexico, Latin America and the United States. The Complainant has used its company name since 1996 and its IENOVA trademark since 2014. It is listed on the Mexican stock exchange by reference to the name IENOVA.

The Complainant points out that the date of registration of the disputed domain name is 22 years after the Complainant company’s incorporation in Mexico, 4 years after its relevant trademark registration and 5 years after the registration of the Complainant’s main domain name <ienova.com.mx>. In the circumstances, the Respondent registered the disputed domain name with knowledge of the Complainant’s registered trademarks, or so the Complainant contends.

The Respondent has never been authorized or licensed by the Complainant to use IENOVA in any manner whatsoever. The Respondent is also said not to have any rights or legitimate interests because all he does with the disputed domain name, is offer it for sale on a website which an Internet user will arrive at if the disputed domain name is used. The Complainant also points out that the disputed domain name is not a generic term, a surname or a non-distinctive word, but a distinctive, registered and recognized trademark: when “ienova” is entered in a Google search engine, the only results are said to relate to the Complainant’s trademark and activities. The real reason that the Respondent registered the disputed domain name is no coincidence, according to the Complainant, but the fact that he knew of its reputation and intended to derive a profit from it.

The Complainant also points out that the registration of a domain name identical or confusingly similar to a trademark, manifests a bad faith registration according to the UDRP Policy. The registration of a well-known company name or trademark is said in and of itself to indicate bad faith. The Respondent is also preventing the Complainant as registered owner, from reflecting its trademark in the disputed domain name itself. The Respondent is not even using the domain name with a real purpose; he is only occupying it to prevent the Complainant from having a website to offer its services to a broader audience. All these circumstances point to the Respondent having registered the disputed domain name in a deliberate manner. According to the Complainant, the Respondent knows that he should be careful not to adversely affect third parties’ trademark rights in registering a domain name. His only purpose was to sell the disputed domain name for a high price which he seeks to command due to the economic position of the trademark owner – offering to sell at above out-of-pocket costs as has occurred here is indicative of bad faith.

The Complainant further alleges that the Respondent has registered and is using the disputed domain name in bad faith because he engaged in a pattern of registering domains related to trademarks, alongside his activity of buying generic and surname domains. Nevertheless, the Complainant says that it has found that the Respondent is not only a generic domain names seller but also a possible cybersquatter, with around 15,901 domain names registered on his behalf of which several are related to trademarks, public persons, and even characters names without having authorization or legitimation. The Complainant lists about 15 such domain names including <askmcdonalds.com> and <bentleyhome.com> and others which incorporate easily recognized trademarks. The Respondent although, as the Complainant accepts, is a renowned generic domain names investor which is a legitimate business, has engaged in a pattern of abusive registrations of numerous domains related to trademarks, such as in the present case, which is not the first time that he has registered and used a domain name in bad faith. It is clear that the disputed domain name was registered and is also being used in bad faith, because the Respondent knew about the Complainant’s trademarks and registered the disputed domain name to obtain an undue profit by selling it at above out-of-pocket cost. Additionally, the Respondent is said to be using the disputed domain name in bad faith, because he is preventing the Complainant from reflecting the trademark in its own domain name.

Finally, the Complainant says that it is necessary to invoke the Passive Holding Doctrine, developed since Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

B. Respondent

The Respondent says he is a domain name investor and owns over 15,000 “.com” domain names. He says domain name investing is a well-known business, that many people worldwide participate in. He points out that the business of domain name investing exists because there is a limited supply of meaningful domain names available to be used, in particular in the primary “.com” extension category. Investors in domain names can make a valuable business from understanding trends in domain name acquisition and popularity. In some configurations domain names are highly desirable and hence less available (e.g., short names commonly used as acronyms). The Respondent says that he has developed a software that searches expiring domain names, to see if they are a match for a certain trend in the marketplace. He points out that when the disputed domain name expired, his software identified that it was likely a string that would be considered valuable as an invented brand. It contains the root word “nova”, a word that most people would be familiar with. He says that out of a possible 676 combinations (such as <aanova.com>, <abnova.com>, etc.), 420 have already been registered (62% of all possible combinations). According to the Respondent, 22 of all 26 possible combinations (85% of all possible combinations), that start with the letter “i” were registered, and all combinations starting with “i” and followed by another vowel were already registered. The inference the Respondent argues for is that the registration numbers indicate a very strong naming trend and therefore it made sense to register the disputed domain name for investment purposes.

The Respondent points out that searching the United States Patent and Trademark Office website/register of trademarks reveals that there are no trademarks for the term “ienova”. While the Complainant claims to employ a great number of people and claims to have invested a significant amount in the area of oil and gas exploration, they do not appear to have any presence in Pennsylvania where the Respondent resides. While the Complainant has registered IENOVA for oil and gas, it could be used for naming many other kinds of businesses in other markets without infringing on the complainants trademark. The Respondent asserts that the disputed domain name was registered prior to the Complainant’s domain name <ienova.com.mx> being registered, originally registered by an organization called Oversee on April 19, 2006 and then later by a French webmaster in August 2012. The Respondent says that this strong history of prior registrations speaks to the strength of the naming trend for this name, as discussed above.

The Respondent says that he is a domain name investor and bought the disputed domain name for investment purposes, the sole purpose being to take advantage of the very strong naming trend. He has no business in the energy industry, and was in no way trying to pretend to be the Complainant for the sake of making profit in the energy business. According to the Respondent, the use of the DAN.com landing page is very common among domain name investors, and its use should make it clear that the disputed domain name was purchased for the purpose of domain investment, and not to sell it to the Complainant.

The Respondent says that if he had registered the disputed domain name for selling it to the Complainant, he would have contacted them, something he never did. The Respondent also says he priced the disputed domain name above out of pocket expense levels because of the strong naming trend it has, and many brandable domain names are advertised and sold at this price level. He says that if he was trying to profit from the Complainant’s trademark, he would have made a website showing advertisements for energy services in Mexico. The Complainant’s contention that the Respondent has not acquired the disputed domain name to conduct legitimate activity with it is said not to be relevant because domain name trading itself is a legitimate business. The disputed domain name was registered as it follows a popular naming trend, and was not registered in bad faith.

The Complainant’s assertion of a pattern of trademark abuse is without merit according to the Respondent. Most of the names the Complainant references are examples of domain names that follow certain naming trends and show a clear pattern of registering both generic domain names, and brandable domain names that follow trending naming patterns.

6. Discussion and Findings

Supplemental filings

The Complainant requested permission for additional filings in response to the Respondent’s contentions. However, the Policy does not normally accommodate additional filings unsolicited by the Panel. It is in the interest of expeditious resolution not to allow the Complainant to respond to specific arguments or contentions of the Respondent. There might otherwise be an argument that the Respondent should then have a further right of response and so forth. In any case, the arguments of the Respondent were adequately foreshadowed in the Complaint. Therefore, the Panel refused supplemental filings.

A. Identical or Confusingly Similar

The disputed domain name is identical to the registered trademark IENOVA of the Complainant.

B. Rights or Legitimate Interests; Registered and Used in Bad Faith

The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name because it consists of a trademark in which the Complainant has rights. Those rights are reflected in trademark registrations in Mexico, and also, according to the Complainant, in the fact that the extensive use of the mark and the economic importance of the Complainant company has resulted in the mark being recognized in Latin America and in the United States, at least in relevant circles. The Respondent says that he is a legitimate domain name trader and chose to acquire the domain name, which had been previously registered, not because it reflected a trademark of which he was well aware, but because certain trends and conditions in the market for domain names made it a desirable name for him to acquire and then sell on for a profit.

The difficulty the Respondent faces is that even if his account is taken entirely at face value, and it is accepted that he acquired the domain name in the context of a general business of buying and selling domain names, as a professional domainer the onus is seen to be on him to ensure that he does not seek to acquire domain names incorporating third parties’ trademarks for abusive purposes. If he does do so, he runs the risk that the trademark owner will avail itself of the UDRP to reclaim the domain name concerned. A right in a disputed domain name includes a right to use it, and certain uses may result in a legitimate interest in retaining registration of such a domain name. It is considered abusive to target and acquire and (passively) hold a domain name incorporating a trademark and then selling it on at a profit (i.e., at a level above expenses of acquisition); on the other hand, acquiring a domain name for purposes unrelated to the goodwill attaching to a trademark will not be considered abusive. The Respondent has not demonstrated any rights or legitimate interests generated by the use of the domain name – insofar as it is not being used, nor does it dispose of any authorization to use or incorporate the trademark of which the domain name consists, nor is he known by that name or has he used it in commerce in some manner that would legitimize his acquisition. The core question therefore is whether the Respondent’s intention was to trade off the Complainant’s trademark, or whether the Respondent acquired the domain name for an independent legitimate purpose.

The Respondent’s arguments in this regard are basically that his search is for what he refers to as “brandable domain names”. These seem to be domain names which will command a good price in the market for such names, and enable the Respondent to conduct a profitable trade. Realizing a profit seems to be predicated on those who wish to acquire and deploy new brands offering a good price for registered domain names that have been registered by another party (such as the Respondent) in anticipation of their adoption as a trademark of a term contained within. However, in the Panel’s view, that is not what happened here. At the time of registration of the disputed domain name, the trademark IENOVA of the Complainant had already been registered for a number of years. It had been in use prior to that. The Complainant is a major company in the energy sector, and it says that its reputation is broad, which given the nature of its interest in utility infrastructure is not surprising.

That it does not represent a consumer brand in use in literally the Respondent’s backyard does not mean that the domain name was not (or should not have been) known to the Respondent at the time of registration. That it is not registered in the United States is also not determinative – the question is whether on the balance of probabilities the Respondent himself knew of the trademark and the Complainant’s goodwill vested in it. All the circumstances must be taken into account to arrive at an answer to that question. As the Panel sees it, one very relevant circumstance is that in this case a Google (or Chrome) search for “ienova” immediately identifies the Complainant as the owner of that brand and indeed occupies the entire first page of results. A similar result occurs on the Bing search engine (with one result for Lenovo and one for Hitachi – the latter possibly based on keyword purchase).

The Respondent maintains that the pricing of the disputed domain name reflects market trends, i.e., the expected price a third party would be happy to acquire a domain name of that kind for, and thus a sum which the Respondent would anticipate a third party would actually pay up for the particular domain name concerned. The elaborate account of how the Respondent came to acquire the disputed domain name may very well be true, or it may be concocted as cover for either his lack of due diligence or his knowing intent to acquire a domain name incorporating the Complainant’s mark with a view to selling it to them. That the Respondent did not actually approach the Complainant to sell the disputed domain name for that figure, in the Panel’s view could rather represent a risk mitigation strategy by the Respondent – while he, being experienced in such matters, would know full well that the Complainant, as the only party who might consider such a sum worth paying, would eventually come across it and approach him, and that in circumstances where other companies would be unlikely to undertake business using the Complainant’s mark. In other words, as the Panel sees it, taking into account all the circumstances of the case, even accepting that the Respondent’s generally adopts an “algorithmic” approach to domain name acquisition, the predominant reality is that it had a single buyer, the Complainant, in mind. Finally, even if the Respondent holds a large number of “generic” or “non-infringing” domain names, the pattern of also acquiring domain names with well-known trademarks contained within them which the Complainant points to, is telling. Rather than the wide scope of his domain name acquisitions supporting the good faith of his business endeavor, the Panel’s impression is that in reality this amounts in essence to an attempt to have the acquisition of other legitimate non-infringing names somehow give cover to ones incorporating third-party marks such as the disputed domain name. The Respondent says this is due to the “naming trends” that make them valuable, but what in fact makes them more obviously and more persuasively valuable is the fact that they contain well-known trademarks.

Therefore, the Panel holds that the disputed domain name was registered and used in bad faith.

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 <ienova.com> be transferred to the Complainant.

William A. Van Caenegem
Sole Panelist
Date: October 7, 2019