SolarEdge Technologies, Ltd v Michael Smith, Sharon Kent, Joseph Hatcher

WIPO Case No. D2024-1919

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

SolarEdge Technologies, Ltd v. Michael Smith, Sharon Kent, Joseph Hatcher

Case No. D2024-1919

1. The Parties

The Complainant is SolarEdge Technologies, Ltd, Israel, represented by DLA Piper UK LLP, United

Kingdom.

The Respondents are Michael Smith, Sharon Kent, Joseph Hatcher, United Kingdom.

2. The Domain Names and Registrars

The disputed domain names <pre-register-solaredgeuk.com> and <solaredgeuk.com> are registered with
Hostinger Operations, UAB. The disputed domain name <register-solaredge.com> is registered with
PSI-USA, Inc. dba Domain Robot. The disputed domain name <solar-edge-energy.com> is registered with
INWX GmbH & Co. KG.

Hostinger Operations, UAB, PSI-USA, Inc. dba Domain Robot, and INWX GmbH & Co. KG are hereinafter collectively referred to as the “Registrars”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2024. On connection with the disputed domain names. On May 8, May 9, May 10, and May 14, 2024, the Registrars transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents (Persons Unknown who are Registrant of the <register-solaredge.com>, <solaredgeuk.com>, <pre-registersolaredgeuk.com> and <solar-edgeenergy.com> domain names) and contact information in the Complaint.

The Center sent email communications to the Complainant on May 13 and May 15, 2024, with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting the Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on May 20, 2024.

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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 and 4, the Center formally notified the Respondents of the the due date for Response was June 11, 2024. The Complainant sent an email communication to the Center on May 30, 2024. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 12, 2024.

The Center appointed Andrea Mondini as the sole panelist in this matter on June 24, 2024. 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 NASDAQ-listed provider of smart energy technologies with headquarters in Israel and presence in 24 countries.

The Complainant holds the domain name <solaredge.com> which hosts its main website.

The Complainant has been trading since 2006 under the SOLAREDGE trademark and owns numerous trademark registrations in several jurisdictions, including:

REGISTRATION REGISTRATION INTERNATIONAL

TRADEMARK	JURISDICTION	NUMBER	DATE	CLASS
SOLAREDGE	European Trademark	006840821	January 21, 2009	9, 35, 42
SOLAREDGE	United Kingdom	UK00906840821	January 21, 2009	9, 35 42
Israel	327836	November 2, 2021	9, 11, 12

Because the Respondent did not file a Response, not much is known about the Respondent.

The disputed domain names were registered on the following dates:

- <register-solaredge.com>: March 25, 2024;

- <solaredgeuk.com>: April 15, 2024;

- <pre-register-solaredgeuk.com>: March 26, 2024;

- <solar-edge-energy.com>: March 11, 2024.

According to the evidence submitted with the Complaint, the disputed domain names <register- solaredge.com> and <pre-register-solaredgeuk.com> resolved to a website advertising an investment opportunity which the Complainant believes to be fraudulent. The disputed domain names <solaredgeuk.com> and <solar-edge-energy.com> do not resolve to active websites, but were included in an allegedly fraudulent email sent to a customer of the Complainant.

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5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, the Complainant contends as follows:

The disputed domain names are confusingly similar to the SOLAREDGE trademark in which the terms such as “register”, “pre-register”, “energy” and/or “uk” is not sufficient to avoid confusing similarity.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The trademark SOLAREDGE has been extensively used to identify the Complainant and its products and services. The Respondent has not been authorized by the Complainant to use this trademark and there is

no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed domain names in connection with a bona fide offering of goods and services. To the contrary, the disputed domain names <register-solaredge.com> and <pre-register-solaredgeuk.com> have been used to impersonate the
Complainant to offer fraudulent investment opportunities to its customers.

The disputed domain names were registered in bad faith because it is obvious that the Respondent had knowledge of both the Complainant and its well known trademark SOLAREDGE at the time it registered the disputed domain names. Respondent is using the disputed domain names in bad faith in an attempt to mislead Internet users into believing that its investment offer is connected to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the
complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

6.1. Consolidation: Multiple Respondents

The amended Complaint was filed in relation to nominally different domain name registrants. The websites with identical content and/or were included in a fraudulent email sent to a customer of the Complainant. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules.

The disputed domain name registrants did not comment on the Complainant’s request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

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In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or
corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable
to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.11.2.

As regards common control, the Panel notes that the above circumstances asserted by the Complainant indicate that the disputed domain names are subject to common control.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to herein as “the Respondent”) in a single proceeding.

6.2. Substantive issues

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The Panel finds the entirety of the mark is reproduced within the disputed domain name.

Although the addition of other terms such as here “register”, “pre-register”, “energy” and/or “uk” may bear on assessment of the second and third elements, the Panel finds that in the present case the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The addition of the generic Top-Level Domain (“gTLD”) “.com” in the disputed domain names is a standard registration requirement and as such may be disregarded under the confusing similarity test under the Policy, paragraph 4(a)(i). See WIPO Overview 3.0, section 1.11.1.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that for a complainant to prove that a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the

knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that
the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the
respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain
name (although the burden of proof always remains on the complainant). If the respondent fails to come
forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.

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The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise.

Panels have held that the use of a domain name for illegal activity such as here impersonating the
Complainant can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section

2.13.1.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the view of the Panel, noting that that the Complainant’s trademark predates the registration of the disputed domain names and considering that Respondent used the disputed domains attempting to impersonate the Complainant, it is inconceivable that the Respondent could have registered the disputed domain names without knowledge of the Complainant’s well known trademark. In the circumstances of this case, this is evidence of registration in bad faith.

The Panel holds that by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site in the sense of

Policy, paragraph 4(b)(iv).

Moreover, panels have held that the use of a domain name for illegal activity such as in the present case impersonating the Complainant constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel notes that the disputed domain names <solaredgeuk.com> and <solar-edge-energy.com> do not resolve to active websites. Nevertheless, also these disputed domain names have been used in bad faith because the Complainant has shown that also these domain names were included in a letter sent to one of the Complainant’s customers to offer a fraudulent investment offer. In any event, panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of these disputed domain names does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. The Panel finds that in the circumstances of this case the passive holding of these disputed domain names does not prevent a finding of bad faith under the Policy.

Based on the available record, the Panel finds that the Complainant has established the third element of the
Policy with regard to the disputed domain names.

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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 names <pre-register-solaredgeuk.com>, <register-solaredge.com>,

<solar-edge-energy.com> and <solaredgeuk.com> be transferred to the Complainant.

/Andrea Mondini/
Andrea Mondini
Sole Panelist
Date: July 8, 2024