Sempra Energy and San Diego
Gas & Electric Company v. Vicky Carpenter
Claim Number: FA0809001226160
PARTIES
Complainant is Sempra Energy and
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sdgesolar.com> the “Domain Name”, registered with Godaddy.com,
Inc.
PANEL
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.
PROCEDURAL HISTORY
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, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <sdgesolar.com> domain name is
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 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 postmaster@sdgesolar.com 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.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Sempra Energy is a
Fortune 500 company based in
It is asserted that
through Complainant’s extensive use of the SDGE Marks, particularly through
SDGE’s utility services provided to consumers in the
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
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 <sdge.com> 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
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 <sdge.com>
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 <help-u-solar.com>,
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.
FINDINGS
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.
DISCUSSION
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
“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.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sdgesolar.com> domain name be TRANSFERRED
from Respondent to Complainant.
CLIVE ELLIOTT Panelist
Dated: December 1, 2008
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum