Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Energy Source Inc., Tempe , AZ, USA ("Complainant") represented by Thomas Gorman, of Sherin and Lodgen. The Respondent is Your Energy Source, Chamblee, GA, USA ("Respondent") represented by Wade Kerrigan, of Blackwell Sanders Peper & Martin.

The domain name at issue is "yourenergysource.com", registered with Network Solutions.

This is a domain name dispute proceeding pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"). A three person arbitration panel was requested; this panel consists of Chairman, Judge Nelson A. Diaz (Retired), of Philadelphia, PA, Judge James A. Carmody, of Houston, TX and Professor, Jeffrey Samuels of Copley, OH. Each panelist has confirmed to the National Arbitration Forum, ("the Forum") that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as the panelist in this proceeding.

Complainant submitted a Complaint to the Forum electronically on January 5, 2001; the Forum received a hard copy of the Complaint on January 5, 2001.

On January 8, 2001, Network Solutions confirmed by e-mail that the domain name "yourenergysource.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Policy.

On January 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding setting a deadline of January 30, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@yourenergysource.com by e-mail.

A timely response was received and determined to be complete on January 30, 2001. On February 7, 2001, Complainant filed an additional brief in accordance with the Forum’s Supplemental Rule 7.

On February 6, 2001, pursuant to Respondent’s request to have the dispute decided by a Three Member panel, the Forum appointed Chairman, Judge Nelson A. Diaz, Judge James A. Carmody, and Professor Jeffrey Samuels as Panelists. Guided by Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), which instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable," the Panel issues this decision.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

Complainant claims to be the owner of a federally registered mark ENERGY SOURCE, which it has used since October of 1991. Complainant alleges that it first used the Mark in connection with videotapes featuring energy efficiency information and instructions for building of energy efficient structures, and for directories, newsletters and brochures regarding such energy efficient construction. Complainant also claims to be the owner of a federal trademark registration for the Mark, dated September 21, 1993. Complainant inexplicably failed to include in its Complaint the fact that the federal trademark registration was cancelled on December 29, 2000, approximately one year before the Complaint was filed. Complainant alleges that, since February 1996, it has expanded the scope of its use of the Mark beyond the goods identified in its 1993 Certificate of Registration. Complainant currently uses the Mark in connection with buying and selling of goods and services in energy related markets over a global computer network; and providing information of energy and marketing services. As a result of its extensive and exclusive use of the Mark, Complainant alleges that it has acquired valuable goodwill in and public recognition of the Mark. Finally, Complainant contends that Respondent’s use of its domain name, "yourenergysource.com", is likely to cause confusion in the marketplace due to its confusing similarity with Complainant’s mark.

Respondent disputes Complainant’s allegations. In particular, Respondent avers that Complainant’s rights in the Mark are limited in scope due to the fact many third parties also use the Mark ENERGY SOURCE (or variations thereon). Respondent argues that such extensive third party usage demonstrates that the Mark is weak (either generic or descriptive) and therefore entitled to little, if any, protection. Respondent further asserts that upon cancellation of Complainant’s registered trademark in December, 2000, Complainant arguably lost any "presumption of descriptiveness" that inhered to the Mark. Respondent also points out that any rights Complainant had with respect to the registered Mark were limited to the goods specifically identified by the Federal Registration. This federal registration simply did not extend protection to those goods and services now at issue in this dispute. Thus, Complainant enjoys only common law rights in the Mark with respect to the goods and services now sold. Respondent further avers that Complainant did not apply for a registration of the Mark in connection with the later adopted goods and services until August 15, 2000, which post-dates Respondent’s registration of the domain name in question and its first preparations to use the domain name in association with a bona fide offering of goods and services.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name be cancelled or transferred:

Respondent bases its denial that its domain name is identical or confusingly similar to Complainant’s Mark in large measure on its assertion that the domain name is comprised of generic and/or descriptive terms not exclusively associated with Complainant’s business. While we, of course agree that genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration, see Windsurfing International, Inc., v. AMF, Inc., 613 F.Supp 9333 (S.D.N.Y. 1985), aff’d in part and reversed in part [1986] USCAFED 87; 782 F.2d 995 (Fed.Cir. 1986), because of our findings below, it is not necessary for us to now determine whether or not Complainant’s mark has become generic. Instead, we focus on the domain name itself, "yourenergysource.com", which is undoubtedly similar, but not identical to Complainant’s mark. See Rollerblade, Inc. v. CBNO and Ray Redican Jr., D2000-0427 (WIPO Aug. 24, 2000).

In finding that the domain name and mark are "confusingly similar", we are guided by recent federal court decisions which have concluded that confusing similarity should be determined by comparing the mark and domain name alone, independent of the other marketing and use factors usually considered in a traditional infringment action. See, e.g., Northern Light Technology, Inc. v. Northern Lights Club, 2000 U.S. Dist. LEXIS 4732 (D. Mass. Mar. 31, 2000).

Applying that principle here, we find that "yourenergysource.com" is confusingly similar to Energy Source. The salient feature of each is "energy source". The addition of "your" is likely to be viewed by Internet users as something related to "energy source". While the use of "your" as a prefix to a domain name is not so common as the use of another possessive, "my", the function of each is essentially the same. See Sony Kabushiki Kaisha et al v. Sin, Eonmok, D2000-1007 (WIPO Nov. 16, 2000) (finding that the domain name "mysony.com" was confusingly similar to the Complainant’s trademark "Sony", the panel stated "the letters ‘my’, to an English language reader, introduce the concept of possessiveness. That which is possessed is the following letters, namely ‘Sony’, which is the Complainant’s trademark. The addition of the letters ‘my’ has the effect of focusing the reader’s attention on the Complainant’s trademark"); MP3.com Inc. v. Sander & Assoc., D2000-0579 (WIPO Sept. 22, 2000), (finding that, "the term ‘my’ or ‘mine’ has well-understood English meaning. When used in conjunction with MP3 it arguably suggests that a user is able to personalize his/her MP3 activity"). Applying this same logic, the Panel finds the domain name "yourenergysource.com" is confusingly similar to Complainant’s ENERGY SOURCE Mark.

Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or legitimate interest in the domain name includes:

Complainant’s averment that it has a greater right, title, or interest in the domain name than the Respondent and that Respondent has no rights or legitimate interest in the domain name is unsupported by the evidence. The Panel finds that Respondent has made a more than sufficient showing with regard to the factors set forth under paragraph 4(c).

First, Respondent asserts that, prior to notification of this dispute, it had already begun preparations to offer goods and services via the domain name at issue. See SFX Entertainment, Inc. v. Phillip Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the Respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services); see also Western Hay Co. v. Forester, FA 93466 (Nat. Arb. Forum, Mar. 3, 2000) (finding that the Respondent was using the domain names for a legitimate purpose). We find the evidence to be overwhelmingly supportive of Respondent’s position.

Second, Respondent claims that it is making a fair use of the domain consistent with Paragraph 4(c)(iii) of the Policy. See Rollerblade, Inc. v. CBNO and Ray Redican Jr., D2000-0427 (WIPO Aug. 24, 2000) (finding that "genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration"); see also SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the Complainant failed to show that it should be granted exclusive use of the domain name "SOCCERZONE.COM", as it contains two generic terms and is not exclusively associated with its business). Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business.

Thus, the Panel finds that Complainant has not met its burden in proving that Respondent had no rights or legitimate interest in the domain name.

Paragraph 4(b) of the Policy sets forth, "in particular but without limitation," circumstances which "shall be evidence of registration and use of a domain name in bad faith." These non-exclusive circumstances include:

The Panel finds that Respondent successfully rebutted Complainant’s averments that it registered and used the domain name at issue in bad faith. Indeed, we find that Complainant has produced no credible evidence of bad faith on the part of Respondent. See Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug 21, 2000) (finding no bad faith even though Respondent’s ownership and purported use of the domain name frustrates Complainant’s efforts where the record does not indicate any purpose or intent on the part of the Respondent to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respondent’s site by creating a likelihood of confusion); see also Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that Respondent registered the domain name with the intent of capitalizing on Complainant’s trademark interest). The Panel thus finds Complainant has not met its burden on the third element: bad faith registration and use of the domain name.

In light of the Panel’s findings that Complainant has not met its burden of proof with regard to the second and third elements under the Policy, we find in favor of Respondent. Complainant’s request to transfer the domain name, "yourenergysource.com" is hereby DENIED.