Ambit Holdings, L.L.C. who held a trademark on the term Ambit just lost a UDRP on the domain name ambit.com
The domain holder which also formed a corporation named Ambit some how was able to acquire a domain name in 2010, that the trademark holder with a BILLION dollars in sales failed to do.
Here are the relevant facts and findings by the one member panel
Complainant is an electricity and natural gas service provider that serves residential and commercial customers, primarily marketed through a direct sales channel of more than 150,000 Independent Consultants.
Complainant has served more than 1 million residential customers and produced nearly $1 billion in sales.
Complainant has received widespread recognition for its services provided under the AMBIT mark
The domain name at issue, (the “Domain Name”), was acquired by Respondent on March 2, 2010.
Proper resolution of this dispute requires the Panel to make findings as to the registration and use of the AMBIT mark and as to the registration and use of the Domain Name
Regarding the AMBIT mark, the Panel finds:
Complainant’s predecessor-in-interest, Ambit Energy, LP (“Predecessor”) adopted and first used the AMBIT ENERGY mark in 2006, in conjunction with the distribution of energy, namely, distribution of electricity and natural gas to residential and commercial customers.
Predecessor extensively marketed and advertised its services of energy distribution in the Dallas/Fort Worth area and on the Internet.
Predecessor’s method of marketing involves referral services in which its customers refer other potential customers to Predecessor for electrical services.
Predecessor has been successful in its marketing and advertising, in substantially expanding its services of energy distribution.
Predecessor has obtained federal, nationwide rights in the AMBIT ENERGY mark by reason of its U.S. Trademark Registrations Nos. 3,389,995 and 3,443,624 having effective dates of July 3, 2007 and February 15, 2007.
Predecessor adopted and first used the AMBIT mark concurrently with the AMBIT ENERGY mark, and has used that mark in a manner similar to the AMBIT ENERGY mark
Predecessor has obtained federal, nationwide rights in the AMBIT mark by reason of its U.S. Trademark Registration No. 3,783,848 having an effective date of April 14, 2009.
Complainant acquired all right, title and interest of Predecessor in the AMBIT ENERGY and AMBIT marks and their associated goodwill on May 5, 2011.
Complainant has continued and expanded Predecessor’s use and registration of the AMBIT ENERGY and AMBIT marks to the present.
Respondent registered the Domain Name on March 2, 2010.
Respondent submitted an application for a merchant account (for credit purposes) on or about October 26, 2010, stating that the product was to be an “investment algorithm software license.
Respondent had in operation, at least as early as December 12, 2010, a web page using the Domain Name and a User Agreement relating to the web page. The web page requests the user to sign up for a fee-based access to “the world’s #1 Investment Algorithm.” The User Agreement refers to a a unique cloud-based user interface, proprietary computer algorithm and push notification premium subscription service at www.ambit.com.”
The User Agreement was executed by an Ann Tribble on or about December 3, 2010, who concurrently transferred $297 to Respondent for investment.
A financial record for “Ambit” shows the $297 investment in 2010 and a $39.95 investment on March 13, 2011. Both investments are identified as “completed.”
The corporate charter of Ambit.com, Inc. has been forfeited, and the company failed to file an annual report in 2011.
There is no evidence supporting Respondent’s claim that he continued to provide his algorithm service subsequent to March 13, 2011.
Beginning at least as early as August 8, 2011, and continuously through February 18, 2013, Respondent displayed a web page employing the Domain Name. These web pages identified “Ambit Solar” as a “Fastest Growing Industry” and promoted services in which customers refer other potential customers. Two photos on the web page are overlaid with the phrases “You shouldn’t have to pay more to support 100% pollution-free electricity” and “Competitively priced, cleaner energy for your business.”
Through this web page, Respondent was marketing energy distribution services through the use of a referral service
Respondent’s name is Josh Koppang.
Although Respondent did own a corporation having the name “Ambit.com, Inc.”, that company no longer exists. And Respondent has proven only a single sale of its investment algorithm services using the Domain Name. These facts do not establish that Respondent is commonly known by the Domain Name.
Respondent’s uses of the Domain Name for his investment algorithm services and his solar electrical energy referral services are commercial.
The Panel finds that notice of this dispute did not occur until the filing of the Complaint on February 14, 2013.
Prior to that time, Respondent’s primary use of the Domain Name was for his solar electrical energy referral services.
Respondent contends that such use was only in the form of mock marketing web pages for a third party after July 2011 and that no business was conducted through the use of those web pages.
Although Respondent has substantiated his reason for the creation and posting of the web pages, he has not explained why the web pages remained on his web site for almost two years.
During this period, how did Respondent provide his investment algorithm services? Certainly, he did not use the Domain Name. The only logical conclusion that the Panel can draw is that Respondent at least tried to conduct his solar electrical energy services during this period.
Complainant has made no showing that Respondent’s registration of the Domain Name was made for the purpose of selling the Domain Name to Complainant, or for preventing Complainant from reflecting the AMBIT mark in a corresponding domain name, or for disrupting the business of Complainant.
The fact that Respondent may have later engaged in bad faith use of the Domain Name cannot by itself obviate Respondent’s prior good faith registration of the Domain Name.
Complainant contends that Respondent’s later effort to sell the Domain Name to Complainant is evidence of Respondent’s bad faith registration.
The Panel rejects this contention.
The discussions between the parties at the time of the proposed sale show nothing more than normal tactics in the game of negotiation.
It may be that Respondent was very clever in setting up a “straw” business to hide his real intent at the time of registration. But, the Panel cannot come to that conclusion from the record in this proceeding.””