SCANA Corporation v. Jane Madison
Claim Number: FA0708001067473
Complainant is SCANA Corporation (“Complainant”), represented by Maury
M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <scana.mobi> and <scanaenergy.mobi>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
R. Glen Ayers, Jr. served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 23, 2007.
On August 23, 2007, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <scana.mobi> and <scanaenergy.mobi> domain names are registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 29, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 18, 2007 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 email@example.com and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on September 13, 2007.
On September 20, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it holds rights in a mark, SCANA, by registration with the United States Patent and Trademark Office. It has also filed a pending trademark application for the mark SCANA ENERGY.COM. It also maintains a website at <scanaenergy.com>, which it established in 1997. Complainant complains that the domain names registered by Respondent, <scana.mobi> and <scanaenergy.mobi> were registered on October 30, 2006. The domain names are not currently in use and merely advertise that each is for sale.
Complainant asserts that these domain names are identical to or reasonably similar to its trademarks. Although the two domain names add the “.mobi” top level domain name to the trademark, Complainant asserts that this is insufficient to prevent the domain names from being confusingly similar to the marks. In addition, Complainant asserts that the SCANA trademark is very well-known, making addition of the work “Energy” to the domain name <scanaenergy.mobi> irrelevant.
Complainant states that its two assertions about the use of “.mobi” and the addition of the word “energy” are supported by a long line of cases in domain name arbitration and litigation. Those cases almost universally establish that the addition of generic words and top level domain names do not change the identical to or confusingly similar nature of domain names like the two domain names under review in this proceeding.
Complainant also asserts that Respondent has no legitimate rights or interests in the domain name. Respondent has not leased the SCANA marks; it is not known by the name SCANA; and, SCANA has not consented to any use. Respondent has not made any use of either domain name other than to offer them for sale.
SCANA asserts that Respondent has registered the domain names in bad faith. It asserts that Respondent had constructive knowledge or notice of the SCANA mark since these are registered and well-known marks. Further, Complainant asserts the use of the mark is evidence of bad faith.
Complainant notes that SCANA is a word coined by Complainant (it is an artificial or made up word). Finally, Complainant asserts that Respondent has made no use of the domain names “in connection with a bona fide offering of goods and services.” The websites associated with the domain names merely offer the domain names for sale.
Respondent has filed a Response that is not particularly responsive. First, Respondent asserts that it has the right to use the mark in connection with the domain name extension. Respondent asserts that SCANA could have always protected itself by registering the domain names. Respondent also has requested a continuance to determine how the “.mobi” extension will be defined. In the alternative, Respondent asks for a six month extension so that it can have additional time for research and for “any petition to the courts to be heard.”
Finally, Respondent asserts that it is a “typical average family with very little resources to defend ourselves against a fortune 500 company.” Respondent asserts that this action constitutes bullying by SCANA. Respondent seems to request or demand that SCANA conduct a shareholders meeting so that the shareholders can approve or disapprove this action.
Finally, the Respondent asserts that this matter somehow lodged an improper venue (apparently, the Arbitrator’s office). It asserts that the venue is inconvenient and expensive to reach.
First, the Arbitrator finds that Respondent’s request for an extension of time of six months should be denied, no grounds having been shown. Respondent also requests “that any similar names in this case ending with different extensions also be involved in the form of proceedings as additional respondents.” That request is beyond the scope of an arbitration proceeding such as this and is denied. Also, Respondent requests an extension or continuance until the purpose and definition of the “.mobi” extension is determined, or in the alternative, a six month extension so that Respondent can have additional time for research or to petition the courts. Those requests are denied as improper and improvident.
Further, this arbitration proceeding grants this Arbitrator no power to require a corporation to convene a shareholder’s meeting. Respondent has not asserted that the filing the Complaint in this case was beyond the ordinary course and scope of the authority given by shareholders to directors of corporations and by directors of corporations to their officers and employees. Even if this Arbitrator had the authority to make such a demand or create such an order, the burden to show that this proceeding was beyond the course and scope of the authority of employees and directors is on Respondent and Respondent has made no such showing.
Finally, as to venue, the Arbitrator finds
that venue is irrelevant in paper proceedings.
The location of the Arbitrator “in desk” or “paper” arbitrations is
irrelevant. The United States Mail, Federal
Express, and other delivery services do reach both the National Arbitration Forum’s
offices in Minnesota, and the offices of this Arbitrator in San Antonio,
Texas. Because these arbitrations are
conducted by analysis of pleadings received from an express delivery service,
having the Forum located in
Complainant has established a prima facie case that it holds a mark and that the two domain names are identical and confusingly similar. Respondent has offered no significant rebuttal other than to assert that the “.mobi” extension is of uncertain definition.
Complainant has shown a prima facie case that the Respondent has no rights in the mark SCANA. Respondent has made no attempt to rebut that allegation.
Next, Complainant has made a prima facie case of bad faith on behalf of Respondent, and Respondent has made no rebuttal.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) 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.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The two domain names are identical or confusingly similar to the marks held by SCANA. As the great weight of decisional authority holds, the addition and a generic top-level domain such as “.mobi” does not affect the analysis. See eLuxury.com, Inc. v. Sandulli, FA 960178 (Nat. Arb. Forum June 7, 2007) (determining that the <eluxury.mobi> domain name was identical to the complaining party’s ELUXURY mark); see also Starkey v. Bradley, FA 874575 (Nat. Arb. Forum Feb. 12, 2007) (“The suffix .mobi should be treated the same way as .com and should be ignored when comparing the mark and the disputed domain name.”).
As to the <scanaenergy.mobi> domain name, that
domain name is confusingly similar. As
Complainant has pointed out the addition of the generic word “energy” is not
sufficient to affect the analysis of whether or not the domain name and the
SCANA mark are confusingly similar. See Arthur
Guinness Son & Co. (
Because Complainant made out a prima facie case in support of its allegations, the burden shifted to Respondent and Respondent did not make any attempt to meet that burden. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
The decisional authority provides a number of grounds to find bad faith. The most important to the Panelist is that the SCANA mark is old and well-established and held by a well-known company, which creates constructive knowledge of and constructive notice of use of the mark SCANA. See Pfizer, Inc. v. United Pharmacy, Ltd., D2001-0446 (WIPO June 8, 2001). Further, Respondent holds the domain names only for purposes of resale. See generally Lyon v. Casserly, FA 193891 (Nat. Arb. Forum Oct. 29, 2003); see also World Wrestling Fed’n Entm’t, Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000).
Finally, Respondent has made no attempt to rebut these allegations.
Having established all three elements required under the ICANN Policy, the Panelist concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <scana.mobi> and <scanaenergy.mobi> domain names be TRANSFERRED from Respondent to Complainant.
R. GLEN AYERS, JR., Panelist
Dated: October 2, 2007
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