WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Budget Energy Limited (Budget Energy ROI) and Budget Energy Limited (Budget Energy NI) v. Prepay Power Limited

Case No. DIE2013-0002

1. The Parties

The Complainants are Budget Energy Limited of Dublin, Ireland and Budget Energy Limited of Londonderry, United Kingdom of Great Britain and Northern Ireland, (“Budget Energy ROI” and “Budget Energy NI” respectively and together, the “Complainants”), represented by Galligan Johnston Solicitors, Ireland.

The Respondent is Prepaypower Limited of Dublin, Ireland, (the “Registrant”) represented by William Fry Solicitors, Ireland.

2. The Domain Name and Registrar

The domain name at issue, namely <budgetenergy.ie> (the “disputed domain name”), is registered with IE Domain Registry Limited (“IEDR”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2013 via email and on May 14, 2013 by courier. On May 3, 2013, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On May 13, 2013, IEDR transmitted by email to the Center its verification response confirming that the Registrant is listed as the Registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceedings commenced on May 16, 2013. In accordance with the Rules, paragraph 5.1, the due date for Response was June 17, 2013. The Registrant filed a Response on June 13, 2013 by email and on June 17, 2013 by courier.

The Center appointed G. Brian Hutchinson, Yvonne McNamara and Adam Taylor as panelists in this matter on July 29, 2013. 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.

4. Factual Background

A. The Complainants

Budget Energy NI is the second-named, but longest established of the Complainants. It is a United Kingdom (“UK”)-registered company, incorporated on September 9, 2009. It was previously known as Kinread Limited but changed its name to its current name on May 18, 2010.

Budget Energy NI is a provider of low cost electricity to customers in Northern Ireland - both on a pre-pay and on an invoicing basis. Also, it is the owner of a domain name registered with the UK top-level domain that incorporates the company name, namely <budgetenergy.co.uk>. This domain name was registered on September 15, 2005.

The first-named Complainant, Budget Energy ROI is an Irish-registered company, incorporated on March 24, 2011. It is in the process of applying for a licence to provide electricity to customers in Ireland but as of the date of the Complaint, had not yet commenced trading.

B. The Registrant

The Registrant is a provider of pre-paid electricity to customers in Ireland. The Registrant was incorporated as a company on February 5, 2009 and began trading in 2011.

The Registrant provides meters for installation in customers’ houses by reference to which customers can buy (on a pre-pay basis) a certain amount of electricity and monitor their use and their remaining prepaid supply.

The Registrant applied to register the mark BUDGET ENERGY as an Irish registered trade mark on December 6, 2012, the same day on which it registered the disputed domain name. On January 22, 2013 the Registrant applied to register a figurative representation of the words BUDGETENERGY.IE as an Irish registered trade mark. Both applications (no. 2012/02114 and no. 2013/00104 respectively) are still pending.

The disputed domain name was registered on December 6, 2012.

5. Parties’ Contentions

A. Complainant

Identity or Misleading Similarity with a Protected Identifier

In contending for the identity or misleading similarity of the disputed domain name with a “Protected Identifier” in which the Complainants have rights, the Complainants contend essentially that while the name “Budget Energy” is not registered as a trade mark, it is nonetheless protected as an unregistered trade mark in the island of Ireland.

In this regard the Complainants assert that “[t]he business/trading name ‘Budget Energy’ has a specific reputation and profile within this business sector in Ireland. There is a significant goodwill attached to this branding” and that “certainly it is the case that customers in the market in Northern Ireland would identify the words ‘Budget Energy’ with the Complainants”. The Complainants also assert that the electricity market on the island of Ireland operates as a single market and they assert a particular relevance in that regard in respect of the disputed domain name.

The Complainants further indicate that the first-named Complainant is imminently to trade in Ireland and they recite communications from November 2012 with the Commission for Energy Regulation (“CER”) and communications from December 2012 with the Single Electricity Market Operator (“SEMO”), Retail Market Design Service (“RMDS”), Eirgrid plc and the Meter Registration System Operator (“MRSO”) from December 2012, in that regard.

The Complainants indicate that they investigated the possibility of registering a domain name <budgetenergy.ie> in January 2013 only to find that the Registrant had already applied for the disputed domain name.

The only evidential material attached to the Complaint in respect of the Complainants’ asserted use and/or rights in the “Budget Energy” name consists of company registration details of the Complainants taken from the relevant registries and an extract from the Nominet WhoIs database showing ownership by Budget Energy NI of the domain name <budgetenergy.co.uk>.

The Complainants assert that the disputed domain name is exactly the same as the Complainants’ name and that “[m]embers of the public from Northern Ireland are likely to presume that it is owned by the Complainants (or either of them).”

Rights or Legitimate Interests of the Registrant in the Disputed Domain Name

The Complainants point to the fact that the disputed domain name does not resemble the Registrant’s name. The Complainants contend that the name that the Registrant actively trades under is its own name, namely “Prepaypower” and not “Budget Energy”.

They further assert that the Registrant has no history of using the name “Budget Energy” as a trading name or of marketing under the name “Budget Energy”, other than in its incarnation in the disputed domain name.

The Complainants assert that there is no evidence of bona fide use or preparations for such use by the Registrant of the disputed domain name and in regard to the website accessed by the disputed domain name, namely “www.budgetenergy.ie” the Complainants state that it is a “blocking site” which simply forwards members of the public to the website at “www.prepaypower.ie” and that it is not possible for the public to transact business on the website accessed under the disputed domain name itself.

Registration or Use in Bad Faith

The Complainants assert:

(a) that the Registrant was aware of the Complainants’ plans to commence trading in Ireland and simultaneously with the application for the disputed domain name the Registrant applied to register BUDGET ENERGY as a trade mark; and

(b) that as a supplier in the market, the Registrant must have been aware of the Complainants’ current business activities as well as their plans to supply in Ireland and that the “Registrant was in a position of knowledge at all relevant times.”

On these bases, and taken together with the Complainants’ own asserted use of the name “Budget Energy” and the asserted lack of history of the Registrant with any such name, the Complainants assert that the disputed domain name was registered by the Registrant in order to prevent the Complainants from obtaining a domain name incorporating their name. The Complainants further assert that the Registrant registered the disputed domain name for the purpose of interfering with or disrupting the business or activities of the Complainants.

B. Registrant

Identity or Misleading Similarity with a Protected Identifier

In its responding submission, the Registrant majors on what it asserts to be a deficit in proof of the Complainants’ assertions of acquisition of rights in the unregistered name, “Budget Energy”.

Among other things, the Registrant makes reference to paragraph 1.7 of the WIPO Overview of WIPO Panel Views of Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) and quotes the following: “The Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”

Other materials are relied upon by the Registrant that address the task of demonstrating that a descriptive word has become distinctive; it is to be inferred therefore that the position of the Registrant for the purposes of the Complaint is that the name “budget energy” is descriptive and without inherent distinctiveness such that there is an even greater onus to show use of the mark sufficient to establish that it has become a distinctive identifier.

The Registrant then points to the lack of evidence adduced by the Complainants to demonstrate the unregistered rights argued for. The Registrant:

- recites its understanding that the Budget Energy NI, the second-named Complainant entered the Northern Irish electricity market in June 2011 - 18 months before the disputed domain name was registered;

- asserts that the customer base of the second-named Complainant “is garnered from door to door selling rather than branded marketing”;

- appends to its response an extract from the Nielsen Ad Dynamix Media Monitoring Report which the Registrant asserts details the advertising media spend by energy companies – this document is purported to reflect the second-named Complainant spending EUR 2,126 in such advertising to April this year and, apparently nothing in 2012; and

- appends to its response material that it identifies as the most recent market data available from the Retail Market Monitoring Report May 2013 indicating that the Complainants have a market share of 1.3 % of electricity consumption in Northern Ireland.

The Registrant further argues that such market as the Complainants have in Northern Ireland is irrelevant to their Complaint since the Registrant does not, and is not licensed to, supply electricity in Northern Ireland.

The Registrant contradicts the notion of the existence of a single electricity market in Ireland and indicates that the single market referred to operates at the wholesale level only and not at the level of supply to consumers.

The Registrant seeks to draw a distinction between the goods and services supplied by it and those of the Complainants indicating that it “builds and installs its own infrastructure to provide an exclusive and exclusively prepay service to Republic of Ireland electricity consumers. Whereas Budget Energy (NI) resells electricity supply to consumers on existing Northern Ireland electricity infrastructure operating on both a prepay and a credit basis”.

Rights or Legitimate Interests

In its defence to the allegation of not having a history of using the name “Budget Energy” the Registrant points to the budgeting concept behind the Registrant’s offering which they indicate was launched in January 2011; it indicates in this regard that the Registrant “has used the phrase in marketing collateral since then and has officially used Budget Energy as a trade mark since late 2012”. The marketing material annexed to the Complaint from that period however shows the use of the phrase and concept of “budget control” and other “budget”-related terms but not the phrase “budget energy” so far as the Panel can tell. The Registrant goes on to say that it has used BUDGET ENERGY as a trade mark since late 2012.

As regards the current intentions of the Registrant, the Registrant denies that the website at “www.budgetenergy.ie” is merely a “blocking site” indicating that it provides tips on energy efficiency and that the website is in the process of further development. The Registrant further points to its applications to register the “Budget Energy” name as a trade mark as evidence of its “demonstrable good faith preparations to use” the name and indicates that its plans for the mark include a home improvements service center pursuant to the European Communities (Energy End-Use Efficiency and Energy Services) Regulations, 2009.

Registration or Use in Bad Faith

The Registrant also asserts a lack of evidence supporting the Complainants’ case on this point.

The Registrant asserts that it is absurd to suggest that the Registrant engaged with the “Budget Energy” name to frustrate the business efforts of the Complainants in circumstances where the Complainants are not licensed to provide services in Ireland and the Registrant is not licensed to provide services in Northern Ireland. They further say “the Complainants have stated that they had no intention of operating in the Republic of Ireland until January 2013. The Complainants have also admitted that they had no intention of registering the domain name until January 2013. By this stage the Registrant had taken significant steps in protecting its trade mark by submitting a trade mark application to the Irish Patents Office and furthermore by registering the domain name and launching a website at the <budgetenergy.ie> domain name as an extension of its brand and in light of the Better Energy Initiative.” The Panel can find no indication in the Complainants’ submission that the Complainants had no intention of operating in Ireland until January 2013 and indeed an earlier intention arises to be inferred in that regard from the Complainants’ indication that they had discussions with regulators to that end at the end of 2012.

In response to the claim that the Registrant knew of the Complainants’ activities and plans the Registrant says that “the Registrant could not have been aware of any intent to commence trading in the Republic of Ireland by the Complainants at the time that it registered the domain name and lodged its trade mark applications” and “The Complainant had made no announcement of any such intention. As mentioned previously, this assumes that CER and other bodies would have made public this information, contrary to their obligations of confidentiality to the Complainants. The assertion that the Registrant was in a position of knowledge is utterly unsubstantiated.”

6. Discussion and Findings

Under the paragraph 1.1 of the IEDR Policy, the elements of a justified complaint in respect of a domain name are as follows:

“1.1.1 a domain name is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights;

1.1.2 the Registrant has no rights in law or legitimate interests in respect of a domain name; and

1.1.3 a domain name has been registered or is being used in bad faith.”

Paragraph 1 of the IEDR Policy prescribes the issues to be considered by the panel in coming to its decision as to whether registration of the domain name at issue should be (a) confirmed; (b) cancelled; or (c) transferred – the three possible outcomes of the IEDR dispute resolution process.

The Panel notes that the IEDR Policy is similar in many respects to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and therefore considers it appropriate to refer to authorities concerning the UDRP to the extent applicable to the IEDR Policy.

A. Identical or Misleadingly Similar to a Protected Identifier in which the Complainant Has Rights

The first element to be established by a complainant is that it has rights in a “Protected Identifier” to which the domain name at issue is identical or misleadingly similar.

Paragraph 1.3 of the IEDR Policy provides that:

“Protected Identifiers for the purposes of this Policy are:

1.3.1 trade and service marks protected in the island of Ireland.

1.3.2 personal names (including pseudonyms) in which the Complainant has acquired a reputation in the island of Ireland;

1.3.3 geographical indications that can prima facie be protected in the island of Ireland[…]”

Neither of 1.3.2 nor 1.3.3 is relevant to the Complaint in this case. The Complainants are moving the Complaint on the basis that it has a trade or service mark protected in the island of Ireland.

As to whether the Complainants do have such a right is clearly a question of law under the law applicable on the island of Ireland, which of course comprises two legal jurisdictions – that of the Republic of Ireland (the State so comprised being properly called “Ireland” but termed the “Republic of Ireland” only for the purpose of clarity in this Decision) and that of the devolved jurisdiction of Northern Ireland within the United Kingdom – the laws of both of which are engaged by the facts of this Complaint. Paragraph 4.15 of WIPO Overview, 2.0 recognizes that the question of the existence or otherwise of the rights asserted are a matter for the application of the relevant national law.

Registered trade marks are of course protected under the relevant trade mark legislation of each jurisdiction and indeed of the European Union in the case of Community trade marks. The Complainant does not rely on any registered right but rather common law rights or what are sometimes known as rights in unregistered trade marks.

In respect of common law rights, it is very well established in the Republic of Ireland and the UK that one may take an action to restrain use of a trade mark by another person if the impugned use is such as to mislead the relevant public that there is a link or association between the business of the person whose use of the mark is impugned and that of the plaintiff. The relevant cause of action in such circumstances is the tort of passing off.

Strictly speaking, what is protected under the tort of passing off is the plaintiff’s right of property in the goodwill of his or her business, as distinct from a right in the trade mark used in connection with the business. However since the mechanism by which confusion as to a link or association between businesses generally arises is through use by one person of a mark that another person considers distinctive of his or her business, the remedy is generally directed to the impugned use of the relevant mark and marks otherwise identical or confusingly similar to the mark used on the business to be protected. It is in this sense that unregistered marks stand to be protected under the law of Ireland and the UK.

The assessment of whether or not such rights are engaged in this case therefore requires an assessment of whether or not the Complainants would have a basis to take a passing off action in the Republic of Ireland or in the UK against the Registrant in respect of use of the disputed domain name.

The formulation of Oliver J in Reckitt & Colman v Borden [1990] 1 WLR 491 (“Jif Lemon”) approved and applied in Ireland in numerous cases, (recently by the Supreme Court in McCambridge Ltd v, Joseph Brennan Bakeries [2012] IESC 46) brings a decision maker to the heart of what needs to be shown by a plaintiff in a passing off action. The formulation is as follows:

“First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying ‘get up’ (whether it consists simply of a brand name or a trade description, or the individual features of labeling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognized by the public as distinctive specifically of the plaintiff’s goods or services.”

“Secondly he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff’s identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff.”

“Thirdly, he must demonstrate that he suffers […] damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendants’ goods or services is the same as the source of those offered by the plaintiff.”

The first requirement therefore for the Complainants in this case, in order to show that the registration or use by the Registrant of the disputed domain name engages their common law rights in at least one of the jurisdictions on the island of Ireland, is to show that they, or either of them, run a business on the island of Ireland in which they have goodwill and that the mark on the basis of which the Complainants bring this Complaint is a distinctive identifier of that business.

The consensus view of WIPO UDRP panels as to what needs to be shown to ground a complaint on an unregistered trade mark condenses and paraphrases the foregoing in referring (at paragraph 1.7 of the WIPO Overview 2.0) to a need to show that the name in question has become a “distinctive identifier” of the business.

The Panel finds that the Complainants have not succeeded in establishing the first part of the test, namely that the name “Budget Energy” is a distinctive identifier of its business. For the avoidance of doubt, the Panel does not find that the name “Budget Energy” is not distinctive of the Complainants’ business, but merely that it has not been shown by the Complainants, for the purposes of this Complaint, that the name “Budget Energy” is distinctive of the Complainants’ business or businesses.

Goodwill is built up in a business primarily through trade. It is a remarkable feature of this case that the only evidence of trading by the Complainants, adduced in the course of the Complaint, was adduced by the Registrant, with the intention of course of arguing that the level of trade in question was not sufficient to build a sufficient level of goodwill on which to base a passing off action or (presumably) to sustain an argument that the name used in connection with such trade has become a distinctive identifier of the business in question.

It seems worth commenting however that even a small trade or trading area is capable of generating goodwill and indeed it is difficult to think of how any trade could be conducted by a business without generating some goodwill. While the information put forward (by the Registrant) appears to reflect a business being conducted on a small scale relative to similar businesses on the market (door-to-door sales, garnering business worth 1.3 % of the energy supply on the market, a spend on certain advertising media of EUR 2,126) that does not of itself mean that the goodwill thereby generated is too insignificant to provide a basis for a passing off action. The courts of both of the jurisdictions relevant to this case have regularly recognized and protected a locally-circumscribed goodwill. Furthermore, under the IEDR Policy, a complaint can be grounded on rights acquired in either of the jurisdictions comprised in the Island of Ireland. In the present case, the Panel was simply given no evidence in this regard by the Complainants and no information that could assist it in contextualizing these figures in terms of the number of operators on the market, the number of operators serving the domestic as distinct from industry sector and the impact of a start up operator serving that sector on a particular cost platform, and so on.

Even more significantly the Panel received no evidence whatsoever as to the manner in which the Complainants use and have used the “Budget Energy” name. This is important because a plaintiff in a passing off case needs to show that the mark at issue has been used in connection with the business in which there is goodwill such that it has become an identifier of that business. In this regard the Complainants provided no screen shots of their website at “www.budgetenergy.co.uk”, no information as to when the website was set up, the marks used on it, the traffic to the website, the nature of the traffic to it. There were no samples of advertising materials of any sort whatsoever – whether used in door-to-door advertising or otherwise – that could allow any inference to be drawn as to the identification of the name “Budget Energy” with the business of the Complainants and as to whether that name was likely to have become a distinctive identifier of that business.

In circumstances where a complainant seeks to oblige a registrant to transfer to it a domain name in dispute and where the IEDR Policy specifically points out (at paragraph 1.4) that the complainant carries the burden of proving prima facie that the three conditions specified in paragraph 1.1 are met, the Complainants have simply not adduced sufficient, or indeed any, evidence to support the first limb of their case – namely that they have rights in the name “Budget Energy”.

The need to give sufficient information to satisfy this first requirement when rights other than registered trade marks are relied upon is evident from the wording not only of the IEDR Policy but previous WIPO panel decisions under the UDRP. In this regard, paragraph 1.7 of the WIPO Overview 2.0 of the consensus emerging from those decisions reads, “…a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required”. In Department of Arts Sport and Tourism v. Odyssey Internet Portal Limited, WIPO Case No. DIE 2005-0002, a case under the IEDR Policy, the panel expressed itself as being unable to make a finding as to acquired distinctiveness of the name at issue there, namely “Culture Ireland”, in the absence of any detail as to the period, nature and extent of the use made of the name by the complainant in that case and in the complete absence of any evidence as to those matters.

In light of the evidential deficit in the Complainants’ case, the Complainants cannot be considered to have demonstrated that they, or either of them, have rights in a Protected Identifier on the basis of which they, or either of them, can ground the current Complaint, and therefore the Complaint must fail on that basis.

In light of that it is unnecessary to deal with the two remaining criteria necessary to be shown before the Complaint can succeed and indeed, it is suggested, it would be potentially unhelpful to make any comment on the matters argued by the parties in that regard, in that the nature and extent of the Complainants’ use of, and rights in, the name “Budget Energy”, if any, inform the assessment to be undertaken of the remaining criteria to be satisfied by the Complainants.

This Decision does not prejudice the Complainants’ right to pursue the matter in the relevant national court.

7. Decision

For the foregoing reasons, the Complaint is denied.

Yvonne McNamara
Presiding Panelist

G. Brian Hutchinson
Panelist

Adam Taylor
Panelist

Dated: August 8, 2013