National Arbitration Forum




Sempra Energy and San Diego Gas & Electric Company v. Vicky Carpenter

Claim Number: FA0809001226160



Complainant is Sempra Energy and San Diego Gas & Electric Company (“Complainant”), represented by Janet Shih Hajek, of Greenberg Traurig, LLP, Washington, D.C., USA.  Respondent is Vicky Carpenter (“Respondent”), California, USA.



The domain name at issue is <> the “Domain Name”, registered with, Inc.



The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.


Clive Elliott as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on September 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 25, 2008.


On September 24, 2008,, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with, Inc. and that the Respondent is the current registrant of the name., Inc. has verified that Respondent is bound by the, 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 October 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 23, 2008 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 by e-mail.


A Response was received in electronic format on October 24, 2008, which was after the deadline for submitting a Response. The Response is therefore incomplete under the ICANN Rule 5.


Additional submissions were received from Complainant on October 28, 2008.


On October 30, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Elliott as Panelist.



Complainant requests that the Domain Name be transferred from Respondent to Complainant.



A.   Complainant


Sempra Energy is a Fortune 500 company based in San Diego, California that operates utilities and provides energy related services and products to 29 million customers. It employs 13,500 employees worldwide and its revenues in 2007 were more than $11 billion. One of its wholly-owned subsidiary utility companies, San Diego Gas & Electric Company (“SDGE” or “SDG&E”), operates in San Diego, and provides electricity and natural gas to 3.4 million consumers. SDGE first began using the “SDGE” or “SDG&E” acronyms in 1964 and an SDGE logo in 1986 (the “SDGE Marks”). Sempra Energy and SDGE are collectively referred to as “Complainant.”


It is asserted that through Complainant’s extensive use of the SDGE Marks, particularly through SDGE’s utility services provided to consumers in the San Diego region and beyond, Complainant has developed valuable goodwill and significant consumer recognition in the SDGE Marks. SDGE is commonly known to the trade and to consumers as simply SDGE or SDG&E. Complainant owns and operates a website at the domain name SDGE.COM, which discusses the energy related services and products provided by the Complainant.


Further, it is asserted that Complainant provides or is in the process of developing renewable energy services and has renewable energy projects currently awaiting approval from the California Public Utilities Commission. Since as early as 2002, Complainant has been researching and broadly publicizing its goals and plans to develop renewable energy services. In 2005, Complainant began investing in research and development and publicizing such efforts regarding the development of the “Sunrise Powerlink,” a new transmission line that will link “green energy” harnessed through renewable energy resources.


Complainant states that Respondent registered the Domain Name on April 25, 2008.


On July 28, 2008, Complainant sent a cease and desist letter to Respondent, requesting that Respondent take down the website used in connection with the Domain Name and discontinue all use.


Respondent replied to Complainant on July 29, 2008, explaining that “someone unknown to us had hacked our site and made unauthorized changes . . . we have since changed the sites back to the original template . . .” The Respondent claimed to be a “Fitness Club that promotes Group Participation [having] nothing to do with energy-related services or [Sempra Energy’s] type of energy business.”


It is asserted that as of July 30, 2008, the Respondent changed its SDGESOLAR.COM website content to anew pretextual website reflecting information concerning a “San Diego Group Exercise Power Club.”


It is asserted that the link to HELP-U-SOLAR.COM, which is prominently displayed on the website for SDGESOLAR.COM, resolves to a website for a company which provides competing and related solar energy products and services to the Complainant’s customers in the San Diego area.


B.   Respondent


Respondent asserts that a representative from Complainant called Respondent about 2 months after they had registered the Domain Name asking if they would sell it.  Respondent says it told Complainant that they had no intentions to sell it and that they intended to use it for their club “The San Diego Group Exercise Power Club” when they started they were only a small bicycle club.   It is asserted by Respondent that in the beginning the Club had hosted the Domain Name on an unsecured domain hosting server using an old Windows 2000 system.  Respondent contends that someone they could not identify had edited their domain adding materials from <> solar information.  When Respondent discovered this they deleted all the material and hired a web person to make sure that no one could edit their web pages again.   It is stated that when Respondent was told by Complainant in a phone call and letter from their attorney that they would sue Respondent if they continued to advertise solar services from other companies Respondent stopped.  


Respondent contends that they do not compete in any way against Complainant, either in product or services, that they offer free Group Exercise sponsored events, are committed to physical activities in the San Diego area and their services help people stay healthy and promote a good life. 


C. Additional Submissions


In response Complainant argues that Respondent’s attempts to argue that her intended use for the Offending Domain Name was for a bicycle club named “The San Diego Group Exercise Power Club” and that someone the Respondent “cannot identify” had “edited [the] domain adding materials from <> solar information.” are belied by the evidence.   It points out that after receiving a cease and desist letter, Respondent changed her web site on or about July 30, 2008 to the “San Diego Group Exercise Power Club.” However, less than two (2) months later, the SDGESOLAR.COM website was changed back again to promote energy efficiency related products and services and to provide a link to <>, a company which installs solar energy products for the purpose of energy efficiency, also owned and operated by Respondent. It further argues that after being challenged in this action, Respondent has changed her website once again.  It submits that such change is not genuine and merely a pretext to avoid liability, as demonstrated by Respondent’s past conduct. Moreover, the website is currently merely a template or skeleton with no substantive content that would demonstrate that Respondent is truly operating an exercise club.


D.  Order


On November 12, 2008 an order was issued inviting Respondent to provide evidence, preferably documentary, to support her assertions in her response of October 24, by 5 pm November 14, 2008. No response was received.



Having reviewed all of the submissions, the Panel finds that:


(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.



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.


Preliminary Issues: Deficient Response and Failure to Respond


Respondent’s Response was submitted only in electronic format after the Response deadline.  Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5.  The Panel, at its discretion, may choose whether to accept and consider this Response.  In J.W. Spear & Sons PLC v. Fun League Management, FA 180628 (Nat. Arb. Forum Oct. 17, 2003) it was found that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight.” A similar approach is adopted here.


By the same token, when Respondent was invited by the Panel to provide evidence, preferably documentary, to support her assertions in her response of October 24 that the Domain Name was used or proposed to be used by the cycle club “The San Diego Group Exercise Power Club,” she was either unable or unwilling to do so.


The Panel turns now to the substantive grounds requiring consideration under the Policy.


Identical or Confusingly Similar: Policy ¶ 4(a)(i).


Complainant asserts its rights in the SDGE mark (Reg. No. 1,506,430 issued Sept. 27, 1988), which was registered with the United States Patent and Trademark Office (“USPTO”).  The Panel finds that this registration is sufficient for UDRP standing under Policy ¶ 4(a)(i).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).


Complainant asserts that the Domain Name is confusingly similar to Complainant’s SDGE, because it merely includes Complainant’s mark, the generic word “solar,” and the generic top-level domain “.com.”  Complainant argues that the word “solar” is descriptive of Complainant’s energy operations.  The Panel finds that the alterations to Complainant’s mark are insufficient to create any meaningful distinction with regards to a Policy ¶ 4(a)(i) confusing similarity analysis.  See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Further, it is established in Whitney National Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) that “[t]he additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”


Accordingly the first ground is made out.


Rights and Legitimate Interests: Policy ¶ 4(a)(ii).


The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).


Complainant asserts that Respondent is not commonly known by either the SDGE mark or by the Domain Name.  While Respondent has alleged that it operates a bicycle club under the name “San Diego Group Exercise Power Club,” Complainant argues that this was modified from its previous name, “San Diego Green Electric Solar.”  The WHOIS information lists Respondent as “Vicky Carpenter.”  The Panel may find that Respondent is not commonly known by the Domain Name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).


As noted above Respondent was invited but failed to provide any evidence to substantiate the claim that she was in some way associated with the cycle (or indeed any other) club “The San Diego Group Exercise Power Club”. In Museum of New Zealand Te Papa Tongarewa v. Nicolas, the Hon. Sir Ian Barker dealt with a situation not unlike the present.  D2004-0288 (WIPO June 15, 2004).  The Panel dealt there with a dispute over a domain name which comprised or included the name of the national museum of New Zealand (Te Papa). In rejecting the respondent’s contention that the domain name “Te Papa” had been registered by the respondent to create a website extolling the beauties and advantages of the many places he had visited and of New Zealand, the Panel found that:


“The Exciting People and Places Around,” the full name for the initials, does not immediately call to mind a website where Filipino migrant workers would find either inspiration as to other places where they might live or solace from their current adversities.”


Accordingly, the Panel concluded that the inference could be drawn that the name, “The Exciting People and Places Around,” was one concocted to give legitimacy to the disputed domain name.  In the present case, Respondent has not provided any evidence to back up her claims.  The inference that arises is that she is unwilling or unable to do so.


Complainant argues that Respondent has operated several websites resolving from the Domain Name, and that all such websites have in some form or another promoted Complainant’s direct competitors, or offered energy services in direct competition with Complainant.  Complainant further claims that Respondent has altered its website several times in response to Complainant’s communications and cease-and-desist requests. This suggests that the Respondent has failed to create a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). 


The second ground is made out.


Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).


Complainant asserts that Respondent’s use of an allegedly confusingly similar Domain Name constitutes bad faith registration and use, because Respondent has intentionally created a likelihood of confusion between the Domain Name and Complainant’s mark for the purpose of promoting competing services.  The Panel finds accordingly under Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).


Complainant also claims that Respondent had actual or constructive notice of Complainant’s marks, given that Respondent resides in the same location as Complainant’s operations, and that Respondent advertised competing services and products on the Domain Name’s corresponding website.  The Panel accepts these contentions, particularly in the light of the findings above and concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii).


Accordingly, the third ground is established.



Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.


Accordingly, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant.





Dated: December 1, 2008







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