SCANA Corporation v. Jucco Holdings
Claim Number: FA0701000893284
Complainant is SCANA Corporation (“Complainant”), represented by Maury
M. Tepper, of Womble Carlyle Sandridge & Rice, PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <scannaenergy.com>, registered with Nameking.com, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 12, 2007 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@scannaenergy.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <scannaenergy.com> domain name is confusingly similar to Complainant’s SCANA mark.
2. Respondent does not have any rights or legitimate interests in the <scannaenergy.com> domain name.
3. Respondent registered and used the <scannaenergy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, SCANA
Corporation, is a Fortune 500, energy-based holding company that provides
various energy services. Complainant,
its subsidaries and affiliates are involved in the generation and sale of
electricty and the purchase, sale and transportation of natural gas to
wholesale and retail customers.
Complainants holds a registration with the United States Patent and Trademark
Office (“USPTO”) for the SCANA mark (Reg. No. 2,260,911 issued July 13,
1999). Complainant has also filed a
trademark application with the USPTO for the SCANAENERGY.COM mark (Serial No.
78/964945 filed August 31, 2006). Complainant
also operates websites at the <scana.com> and <scanaenergy.com>
domain names.
Respondent registered the <scannaenergy.com> domain name on November 18, 2003. Respondent’s disputed domain name resolves to a website that displays various hyperlinks to third-party websites, some of which are in direct competition with 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.
The Panel finds that Complainant’s registration with the USPTO sufficiently establishes Complainant’s rights in the SCANA mark pursuant to Policy ¶ 4(a)(i). 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 <scannaenergy.com>
domain name is confusingly similar to Complainant’s SCANA mark as the disputed
domain name contains Complainant’s mark in its entirety with the addition of an
extra letter “n” to the mark and the addition of the word “energy” that has a
direct correlation to Complainant’s business.
Such additions do not negate the confusing similarity between
Complainant’s mark and Respondent’s disputed domain name under Policy ¶ 4(a)(i). See Am.Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding
that the respondent’s domain name, <americanonline.com>, is confusingly
similar to the complainant’s famous
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish a prima facie case that Respondent lacks rights and legitimate interests in the <scannaenergy.com> domain name. The burden of proof then shifts to Respondent and it must show it has rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent is using the <scannaenergy.com> domain name to operate a website that displays hyperlinks to various third-party websites, some of which are in direct competition with Complainant. The Panel infers that such use is for Respondent’s own commercial benefit through the accrual of click-through fees. Such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Additionally, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information does not indicate that Respondent is commonly known by the disputed domain name and there is no other evidence in the record to suggest that Respondent is or has ever been known by the disputed domain name. Complainant asserts that Respondent is not authorized to use Complainant’s SCANA mark and that Respondent is not associated with Complainant in any way. The Panel thus finds that Respondent is not commonly known by the <scannaenergy.com> domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent is using the disputed domain
name to redirect Internet users to a website that contains hyperlinks to
third-party websites, some of which are in direct competition with
Complainant. Under Policy ¶ 4(b)(iii), such
use constitutes a disruption of Complainant’s business and is evidence of bad
faith registration and use. See EBAY, Inc. v. MEOdesigns, D2000-1368
(WIPO Dec. 15, 2000) (finding that the respondent registered and used the
domain name <eebay.com> in bad faith where the respondent has used the
domain name to promote competing auction sites); see also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
The Panel finds, based on
the uncontested evidence presented by Complainant, that Respondent receives
click-through fees for the hyperlinks displayed on the website that resolves
from the disputed domain name. The Panel
also finds that Respondent’s <scannaenergy.com>
domain name is capable of creating a likelihood of confusion as to the source
and affiliation of Complainant with the
disputed domain name and corresponding website.
In Drs. Foster & Smith,
Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000), the panel found bad
faith where the respondent directed Internet users seeking the complainant’s
site to its own website for commercial gain.
See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”). The Panel thus finds bad faith registration
and use under Policy ¶ 4(b)(iv).
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 <scannaenergy.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 23, 2007
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