Sempra Energy and San Diego Gas & Electric Company v. EnterPrac Company LLC a/k/a Robert Carpenter
Claim Number: FA0809001226165
Complainant is Sempra Energy and San Diego Gas &
Electric Company (“Complainant”),
represented by Janet S. Hajek, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sdgepower.com>, registered with Register.com, Inc.
The undersigned certifies that he 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.
Luiz Edgard Montaury Pimenta 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 26, 2008, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sdgepower.com> domain name is registered with Register.com, Inc. and that the Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.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 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 27, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on October 27, 2008.
A timely Additional Submission was received on October, 31, 2008.
On October 31, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Confusing Similarity of the Disputed Domain Name to the SDGE Marks (ICANN Rule 3(b) (ix) (1); ICANN Policy ¶ 4 (a) (i))
Complainant contends that the disputed domain name fully incorporates the SDGE mark and merely adds the element “power” which would be a common generic term in Complainant’s industry.
Complainant states that the costumers would
likely be confused as to the source, sponsorship or affiliation between
Respondent and Complainant, as Respondent would be taking advantage of the
goodwill developed by Complainant in the SDGE Marks in the same geographic region
Respondent has no Rights or Legitimate Interests in the Domain (ICANN Rule 3 (b) (ix) (2); ICANN Policy ¶ 4 (a) (ii) )
Complainant contends that Respondent has no trademark or other intellectual property rights to the domain name, nor has trademark applications or registrations known to Complainant that incorporate the element SDGE.
Complainant alleges that there is no relationship, nor has there ever been any relationship, between Complainant and Respondent giving rise to any license, permission or other right by which Respondent could own or use any domain name incorporating Complainant’s SDGE Marks.
Complainant asserts that Respondent has never been known by the disputed Domain and that the current name “San Diego Group Energy Power Club” would be “pretextual”, as the name was changed recently from “San Diego Group Exercise Power Club” as of July 30, 2008 and changed prior to this from “San Diego Green Energy Power” as of July 17, 2008.
Complainant alleges that Respondent uses the disputed Domain to direct Internet users to a website which offers highly related solar energy services and merchandise which may lead consumers to believe that Respondent is sponsored or approved by or affiliated with Complainant and that Respondent’s apparent use of “SDGE” as a short form for “San Diego Group Energy Power Club” or “San Diego Group Exercise Power Club” would be completely “pretextual in nature.”
Bad Faith Registration and Use (ICANN Rule 3 (b) (ix) (3); ICANN Policy ¶ 4 (a) (iii))
Complainant contends that given the prior U.S. federal trademark registrations and the prior use of the SDGE Marks, so as the significant presence of the Complainant in Respondent’s geographic location as well nationwide, and the Respondent’s likely use of Complainant’s energy and utility services, Respondent knew or should have known that the disputed domain is confusingly similar to Complainant’s marks. Complainant affirms that this knowledge would be more than sufficient for a finding of bad faith.
Complainant asserts that Respondent’s bad faith is further demonstrated by Respondent’s wife’s registration of the similar domain name <sdgesolar.com> for “San Diego Green Electric Solar,” which also incorporates the SDGE Marks, for the same business as set forth in the Complaint. Complainant stated that a counterpart Complaint was also filed against the domain name <sdgesolar.com>.
Complainant asserts that while Respondent claims that the referred domain has “nothing to do with energy-related services or [Complaint’s] type of energy business,” Respondent’s own resume, found on <dealman.com/robb/resume.htm> states that “[t]he Solar Energy Business is our future and we truly believe it is necessary” above links to the web sites for <help-u-solar.com>, <sdgepower.com> and <sdgesolar.com>.
Identity or Confusing Similarity of the Disputed Domain Name with the Mark in which the Complainant has rights (ICANN Rule 3 (b) (ix) (1); ICANN Policy ¶ 4 (a) (i) )
Respondent informs that he has owned the domain <sdgepower.com> since February 13, 2006, when the Group Exercise Club was formed. Respondent asserts that a representative from Sempra had called them early in 2008 asking if they would sell the domain, and that they told him they had no intentions to sell it. Respondent affirmed that they were intended to use the domain for “The San Diego Group Exercise Power Club,” which was a small bicycle club in the beginning, and that they had hosted the referred domain on “an unsecured domain hosting server using an old windows 2000 system.”
Respondent contends that someone they cannot identify had edited their domain “adding materials from sdge.com solar information,” and that they have deleted all these materials. Therefore, they would have hired a “web person” to make sure that no one could edit their web pages again. Respondent informs that they have “changed the site back to the original template, removed all of the changed or added graphics” and that they “have taken steps to change all the passwords” on the same day they were informed about the referred infringement.
Respondent alleges that they are a “Fitness Club that promotes Group Participation and have nothing to do with energy-related services.” Respondent asserts that the referred domain contains the initials of their club and that it is in action for over 3 years now without any problems.
Respondent contends that they have always respected the service marks of other companies and that they will also take steps to inform a few of their members to check their website from time to time to verify its correctness. Furthermore, Respondent informs that they have changed the passwords and that they would monitor the site more often to verify no future break-ins or hacks occur.
Respondent Should be Considered as Having Rights or Legitimate Interests in Respect of the Domain Name <sdgepower.com> (ICANN Rule 3 (b) (ix) (2); ICANN Policy ¶ 4 (a) (ii) )
Respondent alleges that they do not compete in any way against Complainant—either in products or services—and that they do not intend to sell the domain name to Complainant.
informs that they offer free Group Exercise sponsored events, and that they
just support exercise equipment and other services related to health and
fitness systems. Respondent confirmed that the San Diego Group Exercise Power
Club is committed to physical activities in the
Bad Faith Registration and Use (ICANN Rule 3 (b) (ix) (3); ICANN Policy ¶ 4(a) (iii)
Respondent contends that they do not plan on selling, renting or transferring their domain.
Furthermore, Respondent alleges that they do not use any trademarks of Complainant and that they do not compete in any way with Complainant.
Respondent informs that they have spent their money on hosting and web development services, as well as on advertisement, and that by taking away the referred domain it would be very difficult for them to continue their activities.
C. Additional Submissions
Complainant’s Additional Submission
Confusing Similarity of the Disputed Domain Name to the SDGE Marks
Complainant contends that Respondent registered the Disputed Domain
Name on February 13, 2006, which was after Complainant had developed trademark
rights and had obtained
Complainant asserts that as of July 17, 2008, the website at <sdgepower.com> was titled “San Diego Green Energy Power” and promoted “SDGE POWER,” a company promoting energy-efficiency related products and services owned by Respondent. Complainant contends that after receiving a cease-and-desist letter, Respondent has changed his website on or about July 30, 2008 to the “San Diego Group Exercise Power Club,” and less than two (2) months later, the <sdgepower.com> website has been changed again to promote energy-efficiency related products for the purpose of energy efficiency, also owned by Respondent and his wife, Vicky Carpenter.
Complainant informs having also filled a counterpart complaint against Vicky Carpenter, registrant of <sdgesolar.com> on the basis of virtually identical facts.
Complainant affirms that after being challenged in this action, Respondent has changed his website once again, and that such change is not genuine, as the website is currently merely a template or skeleton with no substantive content that would demonstrate that Respondent is truly operating an exercise club.
Complainant contends that Respondent does not dispute that he owns and operates <help-u-solar.com>, nor does he deny that <help-u-solar.com> was prominently featured on the website for Respondent’s domain as recently as a few weeks ago. Also, Complainant claims that Respondent does not dispute that <help-u-solar.com> directly competes with or serves overlapping customers to Complainant.
Respondent has no Rights or Legitimate Interests in the Domain
Complainant alleges that Respondent has now twice changed the content of his site to give the impression that his site was somehow “hacked” or “tampered” with, which would be a false statement since the site was changed to promote Respondent’s own business, Help-U-Solar (<help-u-solar.com>).
Complainant asserts that Respondent has never received permission from Complainant to use SDGE Marks and has never been known as “SDGE Power.” Complainant contends that any use of the names “San Diego Group Exercise Power Club” or “San Diego Group Energy Power Club” has been a sham. Thus, Complainant argues that Respondent has no rights or legitimate interest in the domain name.
Bad Faith Registration and Use
Complainant contends that Respondent acted in bad faith in registering and using the domain name because he was aware of the SDGE marks held by Complainant and used that knowledge in an attempt to misdirect Internet users to his site for the purpose of commercial gain by creating a likelihood of confusion.
Also, Complainant asserts that Respondent’s pattern of changing content on the site further supports a finding of bad faith.
Complainant has submitted documentary evidence to establish that it is the holder of numerous trademark registrations corresponding to the mark “SDGE.”
The Domain Name was registered by Respondent on February 13, 2006. Respondent is allegedly using the Domain Name for a club for Group Exercise and Fitness. The content of the website, however, is merely a skeleton of a website: no pictures of the supposedly health club, a virtual shop that doesn’t have any product available, many links that resolve to empty pages.
Respondent has not submitted any evidence to support his allegations.
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 Panel finds that the domain <sdgepower.com> contains Complainant’s mark in its entirety,
as Complainant has provided evidence it registered its SDGE Mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,506,430, issued
September 27, 1988). See
The Panel finds that the term “power” is generic, and that it has an obvious relationship with Complainant’s energy related services. Thus, the Panel finds that the generic term “power” creates a confusing similarity between Complainant’s Marks and the disputed domain name. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).
Furthermore, the Panel finds that the
addition of a gTLD is irrelevant in distinguishing a disputed domain name from
an established Mark. See Sporty's
Farm L.L.C. vs. Sportsman's Mkt., Inc.,
Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <sdgepower.com> domain name is confusingly similar to Complainant’s SDGE mark.
With respect to Policy ¶ 4(c)(ii), the Panel does not consider that Respondent has been commonly known by the <sdgepower.com> because the WHOIS information lists Respondent as “EnterPrac Company, LLC” and the Respondent has not proved otherwise.
Furthermore, Respondent previously used the disputed domain name to resolve to a website offering solar power energy services and related merchandise in direct competition with Complainant. The Panel finds Respondent’s effort to confuse Internet users seeking Complainant’s business to Respondent’s competing website via the disputed domain name is not 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). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding no rights or legitimate interests where “Respondent initially used the domain name at issue to resolve to a website where educational services were offered to the same market as that served by Complainant and only altered that use following a complaint by Complainant”).
Moreover, the domain <help-u-solar.com>, which also incorporates the SDGE Marks, has been registered by Robert Carpenter’s wife, Vicky Carpenter, for the same business as set forth in the Complaint.
In addition, the Panel finds the content of the website <sdgepower.com> suspicious. (e.g. there is no “Club News” and there are no “Club Meetings”, there are no photographs of the events, etc.).
Registration and Use in Bad Faith
Under paragraph 4(b), a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).
The Panel finds that Respondent registered the domain name <sdgepower.com> in bad faith.
provided evidence that the SDGE Marks are well-known in Respondent’s geographic
Furthermore, Respondent’s bad faith is further demonstrated by the Complainant, with the printout of <sdgesolar.com> for “San Diego Green Electric Solar,” which also incorporates the SDGE Marks, for the same business as set forth in the Complaint. Complainant gave proof that the referred domain name has been registered by Robert Carpenter’s wife, Vicky Carpenter, and that both domain name registrations <sdgepower.com> and <sdgesolar.com> list the same telephone number.
Also, Respondent’s allegation that somebody hacked their website and had made unauthorized changes is belied by the evidences produced by Complainant. The Panel does not see any relevant reason why somebody would hack and edit the domain adding materials from <sdge.com>. Furthermore, Respondent has not produced any proof to support this allegation.
Moreover, Complainant exposed in the Complaint the printout of the website <dealman.com/robb/resume.htm> with Respondent’s own resume, which stated that “[t]he Solar Energy Business is our future and we truly believe it is necessary” above links to the web sites for <help-u-solar.com>, <sdgepower.com> and <sdgesolar.com>. The Panel found out that the links to the websites <sdgepower.com> and <sdgesolar.com> are not there anymore. The Panel considers Respondent’s pattern of changing content on his own websites and on <dealman.com/robb/resume.htm> a finding of bad faith in this case. Policy paragraph 4(b)(iv).
Furthermore, Respondent has not submitted any evidence to support his allegations.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sdgepower.com> domain name be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta- Panelist
Dated: November 17, 2008