Southern California Edison Company v. Private Whois Service
Claim Number: FA1106001394096
Complainant is Southern California Edison Company (“Complainant”), represented by Richard E. Lyon of Holland & Knight LLP, California, USA. Respondent is Private Whois Service (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <southerncaliforniaedison.com>, registered with INTERNET.BS CORP.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 16, 2011; the National Arbitration Forum received payment on June 17, 2011.
On June 19, 2011, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <southerncaliforniaedison.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@southerncaliforniaedison.com. Also on June 22, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <southerncaliforniaedison.com> domain name is identical to Complainant’s SOUTHERN CALIFORNIA EDISON mark.
2. Respondent does not have any rights or legitimate interests in the <southerncaliforniaedison.com> domain name.
3. Respondent registered and used the <southerncaliforniaedison.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Southern California Edison Company, owns the SOUTHERN CALIFORNIA EDISON mark which it uses in connection with its utility services for generating, transmitting, and distributing electricity. Complainant has registered its SOUTHERN CALIFORNIA EDISON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,409,730 issued December 5, 2000).
Respondent, Private Whois Service, registered the disputed domain name on May 14, 2003. The <southerncaliforniaedison.com> domain name resolves to a website which displays sponsored links to third-party websites, some of which are competitors of Complainant.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant asserts that it has rights in the SOUTHERN CALIFORNIA EDISON mark. Trademark registration has been found to be adequate to demonstrate that a complainant’s rights exist in a mark. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Panels have determined that the validity of a complainant’s rights are not subject to diminished capacity where the registration is in a jurisdiction other than that of the respondent’s place of residence or operation. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Complainant has provided the Panel with documentation of registration of the SOUTHERN CALIFORNIA EDISON mark with the USPTO (Reg. No. 2,409,730 issued December 5, 2000). Therefore, the Panel finds that Complainant has sufficiently established rights in the SOUTHERN CALIFORNIA EDISON mark according to Policy ¶ 4(a)(i).
A respondent’s domain name may not be identical to the mark of a complainant. The addition of a generic top-level domain (“gTLD”) does not make a disputed domain no longer identical to a mark. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to the complainant’s BODY BY VICTORIA mark). Additionally, the removal of spaces between the words of a mark fails to distinguish a domain name from a mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). The Panel finds that Respondent’s failure to do more than add the gTLD “.com” and remove the spaces between Complainant’s mark compels the Panel to find that the <southerncaliforniaedison.com> is identical to Complainant’s SOUTHERN CALIFORNIA EDISON mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) met.
Complainant contends that Respondent has not established rights or legitimate interests in the disputed domain name. Once a complainant has made a prima facie case in support of its allegations, the respondent receives the burden of proving the complainant’s allegations are false. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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 also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). The Panel finds that Complainant has made a prima facie case in support of its allegations. The Respondent, now saddled with the task of disproving Complainant’s allegations, has not submitted a response to the Complaint. Therefore, the Panel may infer that Respondent does not have rights or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). The Panel will review the record for information suggesting Respondent has rights or legitimate interests in the <southerncaliforniaedison.com> domain name.
Complainant contends that Respondent is not, and has never been, commonly known by the disputed domain name. The Panel may determine whether a respondent is commonly known by a domain name based on the information available in the record, including the WHOIS information. 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The WHOIS information for the <southerncaliforniaedison.com> domain name does not suggest affiliation between the domain name registrant and the domain name. Additionally, Complainant has gone on record that Respondent is in no way associated with Complainant or the SOUTHERN CALIFORNIA EDISON mark. The Panel, therefore, finds that Complainant is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Panels often find that the use of a disputed domain name to display links to third-party websites, some of which compete with Complainant, that generate pay-per-click fees are evidence of Respondent’s lack of rights or legitimate interests as being neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Respondent uses the disputed domain name to display links for Internet users to click-through. Some of these links provide goods or services which compete with Complainant. Respondent presumably receives click-through fees for the Internet users that reach Respondent’s website and use the links to reach the third-party websites. The Panel finds this use of the disputed domain name to be neither a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds Policy ¶ 4(a)(ii) to be satisfied.
A respondent may not register and use an identical domain name in a way which disrupts a complainant’s business. See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). Respondent’s <southerncaliforniaedison.com> is used to display links to third-party websites, some of which are competitors of Complainant. As a result, Internet users who are diverted to Respondent’s webpage instead of their intended target, Complainant’s webpage, may utilize the links on the disputed domain name and purchase services from the third-parties rather than from Complainant. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name demonstrates bad faith as it disrupts Complainant’s business under Policy ¶ 4(b)(iii).
Bad faith can be inferred where the attraction for commercial gain is a key component in the registration and use of a disputed domain name by a respondent. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The disputed domain name resolves to a page which displays third-party links. These links are identified as “sponsored” listings. The Panel infers from this language that Respondent receives compensation for displaying the links on the disputed domain name. The Panel finds that Respondent’s registration and use of the disputed domain name to generate monetary awards for Internet users directed through the third-party links displayed demonstrates bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Complainant, having demonstrated that Respondent registered and used the <southerncaliforniaedison.com> domain name in bad faith, have fulfilled the required elements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <southerncaliforniaedison.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 15, 2011
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