PG&E Corporation v. credoNIC.com / Domain For Sale c/o Domain Administrator
Claim Number: FA0603000660705
Complainant is PG&E Corporation (“Complainant”), represented by Barbara L. Friedman, of Hanson, Bridgett, Marcus, Vlahos & Rudy LLP, 425 Market Street, 26th Floor, San Francisco, CA 94105. Respondent is CredoNIC.com / Domain For Sale c/o Domain Administrator (“Respondent”), PO Box 1991, Hallandale 33008.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <pge-northbaja.com>, registered with Enom, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 20, 2006.
On March 15, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <pge-northbaja.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 March 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 13, 2006 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@pge-northbaja.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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." 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 <pge-northbaja.com> domain name is confusingly similar to Complainant’s PG&E mark.
2. Respondent does not have any rights or legitimate interests in the <pge-northbaja.com> domain name.
3. Respondent registered and used the <pge-northbaja.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PG&E Corporation, is an energy utility company formerly known as Pacific Gas and Electric Company. Complainant was incorporated in 1907, and has used the PG&E mark in connection with its business since 1906. Complainant has registered the PG&E mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,319,987 issued Feb. 22, 2000). In addition, Complainant maintains websites in connection with its business at the <pge.com> and <pgecorp.com> domain names. In addition, Complainant is incorporated in California, and once owned a natural gas pipeline called the “North Baja Pipeline,” part of which is located in California’s Baja peninsula.
Respondent registered the <pge-northbaja.com> domain name on June 9, 2004. Internet users who access this domain name are directed to Respondent’s commercial pornographic website.
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 has established rights in the PG&E mark pursuant to Policy ¶ 4(a)(i) by registering the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <pge-northbaja.com> domain name incorporates Complainant’s PG&E mark, with the removal of the ampersand, and the addition of a hyphen, a geographic term and the top-level domain “.com.”. The Panel notes ampersands are not permissible characters in domain names, and therefore the removal of the ampersand from Complainant’s mark does not distinguish the disputed domain name from the mark. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to the complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL). In addition, the additions of a hyphen and a top-level domain name also fail to distinguish Respondent’s domain name from Complainant’s mark. See Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.org>, <tele-place.com>, and <theteleplace.com> are confusingly similar to the complainant’s TELEPLACE trademark). Finally, the addition of a geographic term does not negate the confusingly similar aspect of Respondent’s domain name. See Am. Online, Inc. v. Asian On-Line This Domain For Sale, FA 94636 (Nat. Arb. Forum May 17, 2000) (finding that the domain names, which consist of “ao-l” and geographic location are confusingly similar to the complainant’s mark). Therefore, Respondent’s <pge-northbaja.com> domain name is confusingly similar to Complainant’s PG&E mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it does have rights or legitimate interests in it. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question”). Because Complainant has presented a prima facie case, the Panel will consider whether the evaluation of the evidence demonstrates rights or legitimate interests under Policy ¶ 4(c).
Respondent’s <pge-northbaja.com> domain name is
confusingly similar to Complainant’s PG&E mark, and Internet users who
access this domain name are redirected to a commercial pornographic
website. The Panel presumes that
Respondent registered the disputed domain name to attract Internet users
interested in Complainant’s website to its own website, and that Respondent
expects to generate revenue in the form of referral fees or subscriptions from
attracting Internet users to its website.
Respondent’s use of the disputed domain name to earn money by directing
Internet users to it pornographic website is not in connection with 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 Target Brands, Inc. v. Bealo
Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of
the <targetstore.net> domain
name to redirect Internet users to a pornographic website did not equate to a bona
fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)); see also Vivendi Universal Games v. Chang,
FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not
use a domain name in connection with a bona fide offering of goods or
services nor a legitimate noncommercial or fair use because the respondent used
the domain name to divert Internet users seeking the complainant's goods or
services to pornographic material and links, while presumably earning a
commission or referral fees from advertisers).
The WHOIS database contains no information implying that Respondent is commonly known by the <pge-northbaja.com> domain name. Additionally, Complainant asserts that it is not affiliated with Respondent, and that Respondent is not authorized to use any of its licensed marks. The Panel infers that Respondent has no rights or legitimate interests in this domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the disputed domain name to expose Internet users to its pornographic website, from which it presumably expects to generate revenue. Because the <pge-northbaja.com> domain name is confusingly similar to Complainant’s PG&E mark, and references a geographic area in a state where Complainant operates, Internet users may mistakenly believe that Respondent’s domain name is affiliated with Complainant. Such use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Additionally, Respondent’s use of a confusingly similar domain name to attract users to a pornographic website is itself evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques.”).
Furthermore, the Panel finds that using the disputed domain name to route Internet users interested in Complainant’s website to a pornographic website tarnishes Complainant’s mark, in that it creates the appearance of a relationship between Complainant’s mark and pornography. Such use of the disputed domain name further supports a finding of bad faith under Policy ¶ 4(a)(iii). See American Express Co. v. (This Domain is For Sale) Joshuathan Investments, Inc., FA 154647 (Nat. Arb. Forum June 3, 2003) (finding that using an infringing domain name to redirect Internet users to a commercial adult-oriented website tarnished the complainant’s mark, supporting a finding of bad faith registration); see also Florists' Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Nat. Arb. Forum June 3, 2003) (finding that the respondent’s use of the complainant’s mark in a domain name for an adult website creates a perceived affiliation of the mark with pornography and constitutes bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pge-northbaja.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 3, 2006
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