WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Southern Company v. Texas International Property Associates
Case No. D2007-0773
1. The Parties
Complainant is The Southern Company, Atlanta, Georgia, United States of America, represented by Troutman Sanders, LLP, United States of America.
Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by Shrull Altman LLP, United States of America.
2. The Domain Names and Registrar
The disputed domain names <sotherncompany.com> and <southerncopany.com> (Domain Names) are registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2007. Complainant filed an amendment to the Complaint on June 19, 2007. On May 30, June 20, 21, 22, 25, 26, and 27, 2007, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain names at issue. On June 22, 2007, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2007. The Response was filed with the Center on July 24, 2007 at 4:58 a.m.
On August 8, 2007, Complainant filed a Reply. On August 13, 2007, Respondent filed a Sur-Reply.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on August 10, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant Southern Company is a diversified energy company with $14 billion in assets in the United States of America and revenues in 2006 of $14.3 billion. It is a Fortune 500 company whose stock has been traded on the New York Stock Exchange since 1949.
In the southeastern United States of America, Complainant supplies energy to a 120,000 square mile service area with 4.3 million customers in Georgia, Alabama, Mississippi and Florida. In 2006, the company sold 201 billion kilowatt hours of electricity through four wholly-owned supplier subsidiaries. Complainant also provides telecommunications and energy-related services through several other subsidiaries.
Complainant offers its goods and services under the mark SOUTHERN COMPANY and a family of marks including the term “Southern Company.” Complainant has used the SOUTHERN COMPANY mark continuously and exclusively since before 1950 to identify, market, and promote its energy-related goods and services.
Complainant owns some 13 United States Patent and Trademark Office (USPTO) registrations of the trademark or service mark SOUTHERN COMPANY on the Principal Register of the United States, as follows:
SOUTHERN COMPANY, No. 2,163,676; Registration Date June 9, 1998; First Use in Commerce 8-2-1976; For: Generation, transmission and distribution of energy to retail and wholesale customers.
SOUTHERN COMPANY, No. 2,174,592; Registration Date July 21, 1998; First Use in Commerce 2-4-1996; For: Home and business monitoring services for detection of fire hazard, water line breakage, electrical outages, temperature, presence of carbon dioxide gas, flood detection, appliance operation, burglary and medical needs.
SOUTHERN COMPANY, No. 2,176,397; Registration Date July 28, 1998; First Use in Commerce 8-1-1995; For: Wireless telecommunication services, namely the transmission of voice, data, and information via cellular telephone, pagers, facsimile machines and 2-way radios.
SOUTHERN COMPANY, No. 2,174,591; Registration Date July 21, 1998; First Use in Commerce 4-23-1987; For: Construction and maintenance for others of cogeneration and independent electric power production facilities.
SOUTHERN COMPANY, No. 2,174,593; Registration Date July 21, 1998; First Use in Commerce 4-23-1987; For: Brokerage of energy.
SOUTHERN COMPANY, No. 2,174,589; Registration Date July 21, 1998; First Use in Commerce 6-16-1982; For: Business consulting services in the areas of system planning; power engineering; nuclear engineering: hydro engineering; utility company plant improvements; electric power delivery training and education; privatization of electric utilities and various utility operations; operation for others of cogeneration and independent power production facilities; energy use and management.
SOUTHERN COMPANY (and Design), No. 2,156,554; Registration Date May 12, 1998; First Use in Commerce 8-2-1976; For: Transmission and distribution of energy.
SOUTHERN COMPANY (and Design), No. 2,338,655; Registration Date April 4, 2000; First Use in Commerce 8-2-1976; For: Clothing—namely shirts, T-shirts, golf shirts, jackets, sweatshirts, windshirts, hats, caps and sun visors.
SOUTHERN COMPANY (and Design), No. 2,140,835; Registration Date March 3, 1998; First Use in Commerce 4-23-1987; For: Construction and maintenance for others of cogeneration and independent electric power production facilities.
SOUTHERN COMPANY (and Design), No. 2,140,827; Registration Date March 3, 1998; First Use in Commerce 8-1-1995; For: Wireless telecommunication services, namely the transmission of voice, data, and information via cellular telephone, pagers, facsimile machines and 2-way radios.
SOUTHERN COMPANY (and Design), No. 2,140,832; Registration Date May 3, 1998; First Use in Commerce 2-4-1996; For: Home and business monitoring services for detection of fire hazard, water line breakage, electrical outages, temperature, presence of carbon dioxide gas, flood detection, appliance operation, burglary and medical needs.
SOUTHERN COMPANY (and Design), No. 2,140,830; Registration Date March 3, 1998; First Use in Commerce 4-23-1987; For: Brokerage of energy.
SOUTHERN COMPANY (and Design), No. 2,142,597; Registration Date March 10, 1998; First Use in Commerce 6-16-1982; For: Business consulting services in the areas of system planning; power engineering; nuclear engineering, hydro engineering; utility company plant improvements; electric power delivery training and education; privatization of electric utilities and various utility operations; operation for others of cogeneration and independent power production facilities; energy use and management.
In each of the foregoing, Complainant disclaims exclusive right to use “Company” apart from the mark as shown.
In addition, Complainant owns 17 trade and service mark registrations in which the words “Southern Company” constitute part of the mark, such as GEORGIA POWER A SOUTHERN COMPANY & Design and SOUTHERN COMPANY ENERGY SOLUTIONS.
Complainant also owns numerous registrations of the mark SOUTHERN COMPANY in countries outside the United States of America.
Complainant owns and maintains a website at “www.southerncompany.com” which it uses to provide information about itself and the goods and services it, and its subsidiaries, provide.
Respondent registered the domain name <sotherncompany.com> on November 27, 2004 and the domain name <southerncopany.com> on November 2, 2005.
On July 23, 2007, Respondent filed a lawsuit relating to the subject matter of this complaint in a case styled Texas International Property Associates v. The Southern Company, Cause Number JC-07-016880 in the Justice of the Peace Court, Precinct 5-1, of Dallas County, Texas.
5. Parties’ Contentions
Confusing Similarity to Trademarks in which Complainant has Rights
Complainant contends that it owns all rights, title and interest to the SOUTHERN COMPANY marks and that those marks are distinctive and serve to uniquely identify Complainant and its goods and services to the public. Complainant has spent tens of millions of dollars advertising and promoting the SOUTHERN COMPANY marks and has established tremendous goodwill in the marks. As a result, Complainant contends the marks are famous among the relevant consuming public as identifying the services of Southern Company.
Complainant contends that the Domain Names are confusingly similar to the SOUTHERN COMPANY marks in which it has rights. The Domain Names are virtually identical in substance and appearance to the SOUTHERN COMPANY mark except that in one the word “southern” is spelled incorrectly as “sothern” and in the other “company” is spelled incorrectly as “copany.” The Domain Names are identical in pronunciation and sound to the SOUTHERN COMPANY mark.
Complainant contends that the Domain Names have suggestions, connotations, and commercial impressions that are identical, and, therefore, confusingly similar to those of Complainant’s SOUTHERN COMPANY mark.
Complainant contends that an Internet user inadvertently misspelling the word “southern” or “company” and instead typing one of Respondent’s domain names is directed to Respondent’s website which contains a list of hyperlinks to other websites not related to Complainant and includes references to Southern Company and the SOUTHERN COMPANY mark in ways that suggest that Southern Company may sponsor or be affiliated with the website, which is not the case.
Complainant contends that Respondent profits from its use of the SOUTHERN COMPANY mark by receiving a payment when users click on one or more of the links on Respondent’s website. In addition, when the user is diverted to Respondent’s website, Complainant may have lost the opportunity to interact with that user.
Complainant further contends that Respondent is the named registrant for at least 39 other registered domain names that consist of misspellings of well-known and famous trademarks and that Respondent has been named as respondent in numerous other UDRP proceedings for its registration of domain names that are confusingly similar to the trademarks of others and has been found to have unlawfully registered and used those domain names.
Rights or Legitimate Interests in the Domain Names
Complainant contends that Respondent has no rights or legitimate interests in the Domain Names. Respondent is not and has never been known as “Southern Company.” Respondent does not operate a business commonly known as “Southern Company” and has not used the “Southern Company” name or domain name in connection with a bona fide offering of goods or services.
Complainant contends that Respondent has not acquired trademark or service mark rights for the SOUTHERN COMPANY mark and is not a licensee of Southern Company or otherwise authorized to use the SOUTHERN COMPANY marks.
Complainant further contends that Respondent is not making a legitimate noncommercial or fair use of the domain name but as instead been using the Domain Names to misleadingly divert users searching for Southern Company’s website to Respondent’s website for commercial gain.
Bad Faith Registration and Use
Complainant contends that Respondent registered and is using the Domain Names in bad faith.
Complainant contends that Respondent does not conduct a legitimate business under the SOUTHERN COMPANY mark or under the names “Sothern Company” or “Southern Copany.” Respondent has registered and used the Domain Names with full knowledge of Complainant’s rights in and to the SOUTHERN COMPANY marks. Respondent has registered domain names that are virtually identical to Complainant’s marks and domain name, with only minor misspellings, so that Internet users trying to reach Complainant’s website who inadvertently misspell “southern” or “company” will instead reach Respondent’s website. This constitutes “typosquatting” and is evidence of bad faith.
Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s SOUTHERN COMPANY marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent intends to divert Internet users looking for Complainant’s website to Respondent’s website, which is designed to look like it might be affiliated with Complainant. At Respondent’s website, Internet users are presented with advertisements, information about, and hyperlinks to other websites, including websites for other service providers, so as to persuade them to click on the website advertising links for which Respondent will receive payment. Thus, Respondent has sought to unjustly enrich itself by misappropriating Complainant’s goodwill and creating a likelihood of confusion with Complainant’s SOUTHERN COMPANY marks.
Complainant contends that Respondent has been diverting consumers away from Complainant’s website, making it more difficult for Complainant’s customers and the general public to locate Complainant’s website and disrupting Complainant’s business. Respondent’s use of the Domain Names has caused and could continue to cause serious and irreparable injury to Complainant and to the goodwill associated with Complainant’s SOUTHERN COMPANY marks.
Complainant further contends that Respondent has engaged in a pattern of typosquatting on well-known trademarks, having registered at least 39 domain names that are confusingly similar to the marks of others.
Finally, Complainant contends that Respondent’s use of the Domain Names also amounts to cyberpiracy, trademark infringement, trademark dilution, and unfair competition in violation of U.S. law, citing the Lanham Act, 15 U.S.C §§ 1114(1) and 1125(a), (c), and (d).
Confusing Similarity to Trademarks in which Complainant has Rights
Respondent contends that the case should be decided according to the precedent established in SOUTHBank v. Media Street, WIPO Case No. D2001-0294, in which the Panel ruled that SOUTHBank, an American bank in business for over a decade, could not prove the elements to make an exclusive claim to the <southbank.com> domain name. Respondent argues that in this case, Complainant attempts to assert an exclusive claim to a generic term that is nearly identical to that found in the “southbank.com” case.
Respondent contends that its Domain Names are a combination of a descriptive adjective “southern,” albeit misspelled in one case, and the generic noun “company” again misspelled in one case. These are common words, defined in the dictionary, which, when combined together, mean a company located or coming from the south. “Southern Company”, Respondent contends,”has a well-established generic meaning and is used by numerous persons to describe their businesses. Therefore, there is nothing distinctive about Complainant’s generic name.
Respondent contends that generic words in combination are themselves a generic designation and that numerous ICANN panels have denied complaints on grounds that the complainant’s mark was generic and thus unprotected under the Policy, even if they are registered. Respondent contends that because Complainant’s alleged trademark is descriptive or generic, without secondary meaning, Complainant has no enforceable trademark rights under the Policy.
Respondent further contends that since Complainant has disclaimed the word “company” in its applications it should be able to demonstrate some rights to “Southern” standing alone. When faced with the millions using “Southern” in trade and commerce, respondent contends, the visibility of this company doing business only in “several small irrelevant states in the United States” shrinks to virtual nothingness.
Furthermore, Respondent contends that this case bears no resemblance to the authorities cited by Complainant on typo-squatting on “distinctive and famous” marks, but more closely resembles a case where the owner of 1-888-MATRESS sought the domain name <matress.com>. Dial-A-Mattress Operating Corp. v Ultimate Search, WIPO Case No. D2001-0764. In that case, despite an exact symmetry between the alleged mark and misspelled domain name, the panel refused to transfer observing: “In the present case, it seems the Complainant is attempting to prevent use of a variation of a common descriptive term. The Respondent has registered <matress.com>, but is not trading on confusion with the above referenced mark, and is using the mark to sell mattresses only.”
Finally, Respondent contends that distinctions between the alleged mark and the disputed domain name are also critical. In this case, there is evidence only that Respondent is making use of a commonly used combination of generic and descriptive terms.
Rights or Legitimate Interests in the Domain Names
Respondent contends that it has rights and a legitimate interest in the Domain Names or that the Complaint fails to establish that it does not.
Respondent contends that the links on its website are provided pursuant to Google’s terms and are triggered by search requests entered by computer users. Its websites are not being used to provide services competitive to Complainants’ alleged energy and power business. Instead, the listings are generally for real estate companies in Southern areas, soliciting buyers for homes and other property in Southern cities. There is no intent to target Complainant. Furthermore, Respondent has no control over what terms advertisers bid on at Google and what terms appear on its website.
In any event, Respondent contends that even if Complainant’s claims were true, panels have recognized that the domain name holder is not responsible for potentially offending content where they have contracts with third parties, such as Google or Yahoo, that control that content.
Respondent contends that Complainant cites no authority or rationale to justify “this parasitic interference in the free exchange of information and opportunity,” and ICANN panels repeatedly recognize that such limitations are unnecessary. Respondent may fairly use descriptive or generic terms as a commercial domain name, regardless of whether they are federally-registered.
The fact that advertising revenues may be generated by Respondent’s activity demonstrates a legitimate interest. Respondent registered and began using the Domain Names for similar purposes before receiving notice of the present dispute.
Respondent registered the Domain Names because it believed it was using descriptive terms to which no party had exclusive rights. Respondent believed it was a good domain name for sponsored listings by any of the thousands of separate companies and individuals who want to use “Southern” and “company” in a generic and/or descriptive sense on the Internet, being certain to capture common typographical errors in entering such words. This evidences Respondent’s good faith intent to register common generic words. Where the mark is registered because of its meaning as a word or term, such use establishes the respondent’s legitimate interest.
Respondent contends that several ICANN panels have recognized that the mere ownership of a common term domain should, in and of itself, establish the owner’s rights and legitimate interest. Accordingly, Respondent contends that given the generic and/or descriptive nature of these words, Respondent has legitimate interests in the Domain Names and Complainant has failed to meet its burden under Paragraph 4(a)(ii) of the Policy.
Domain Names Registered and Used in Bad Faith
Respondent contends that, having demonstrated that Complainant’s alleged mark is generic and/or merely descriptive, it must follow that Respondent did not register, and is not using, the disputed domain name in bad faith. Respondent is in the business of providing locator services. Respondent is not attempting to pass itself off as Complainant or any other power company. Rather, Respondent has created a good faith business that is valuable to Internet users seeking to locate providers of goods and services, through reference to common, well-known, generic, descriptive, and geographically descriptive terms.
Respondent contends that it is well established that, where a mark is a common term with substantial third party use, as it is here, the complainant must proffer evidence demonstrating that respondent has specifically intended to confuse consumers seeking out complainant and that there is no such proof here.
Respondent contends it had no actual knowledge of Complainant’s mark and that panels have recognized that mere registration without actual knowledge does not impute a finding of bad faith. In this case, there is no evidence of bad faith for registering a commonly used combination of words.
Finally, Respondent contends it did not register the domain name to sell and there is no evidence of any negotiations for sale.
Respondent contends that its lawsuit in Texas state court seeks declaratory relief from the court that Complainant’s accusations are unsupported by fact and without merit. Respondent contends that its claims in the suit will require discovery and inquiries into ancillary matters outside the scope of the current proceeding, and Respondent requests that the Panel defer to any action of the appropriate national court and stay the WIPO UDRP action.
Further, Respondent contends that due to the circumstances surrounding this dispute, the parties must be afforded the opportunity to engage in discovery and examine witnesses in order to discern the facts and allow Respondent to obtain a fair adjudication to protect its rights in the Domain Names. Respondent requests that this Panel defer its decision to that of the court so that a complete and final adjudication to this matter may occur. In the event that the Panel elects not to defer its decision, Respondent requests a live hearing on this matter before the Panel, with an opportunity to cross-examine opposing witnesses under oath. Furthermore, Respondent requests that any ruling for or against any party remain unpublished to avoid creating bias in potential jury panelists called to serve until after the conclusion of the litigation and any appeal from the litigation.
6. Discussion and Findings
The Panel first addresses the procedural requests Respondent makes which, if granted, would forestall the need for this Panel to reach a decision on the Complaint.
With respect to Respondent’s request that the Panel stay this proceeding on the basis of the action filed in the Texas state court, Paragraph 18(a) of the Rules provides that “In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.” The only precedent cited by Respondent in support of its request, Jason Crouch and Virginia McNeill v. Clement Stein, WIPO Case No. D2005-1201, stayed the proceeding under the Policy because the issue concerning the domain name represented only a small part of much more complex issues involved in the pending lawsuit. Respondent makes no showing that such considerations are present here.
Respondent bases its defense to the complaint almost completely on the fact that Complainant’s trademarks and Respondent’s Domain Names consist of descriptive or generic terms entitled to no protection under the Policy. Under the circumstances, the Panel finds no support for Respondent’s contention that the parties must be afforded the right to engage in discovery and examine witnesses and should therefore proceed in court.
The Panel finds that it has a responsibility to decide the Complaint as provided in the Policy and the Rules. The Policy expressly provides that the present administrative proceedings shall not prevent Respondent (or Complainant) from submitting the dispute to a court of competent jurisdiction for independent resolution before or after the administrative proceeding is commenced. Paragraph 4(k) of the Policy.
Respondent requests in the alternative that the Panel, should it decide to proceed, should hold a live hearing with an opportunity to examine and cross examine witnesses under oath. Paragraph 13 of the Rules provides:
“There shall be no in-person hearings (including hearings by teleconference, videoconference, and web conference), unless the Panel determines, in its sole discretion, and as an exceptional matter, that such a hearing is necessary for deciding the complaint.”
Respondent has not demonstrated that this case is in fact an exceptional matter requiring such procedures. The Panel finds that a live hearing is not necessary to decide the Complaint.
With respect to Complainant’s filing of a Reply and Respondent’s filing of a Sur-Reply, the Policy and Rules provide for only a Complaint and a Response. Paragraph 12 of the Rules provides that “In addition to the complaint and response, the Panel may request, in its sole discretion, further statements or documents from either of the parties.” Inasmuch as the Panel did not request either the Reply or the Sur-Reply, those filings are outside the Rules. The Panel, moreover, does not find the additional statements necessary to its decision of the Complaint and thus resists the temptation of accepting and considering them.
Finally, Respondent requests that any ruling for or against a party to the litigation in the Texas court “remain unpublished to avoid the creation of bias in potential jury panelists called to serve until after the conclusion of that litigation and any appeal therefrom.” Paragraph 16 of the Rules provides that “Except if the Panel determines otherwise (see Paragraph 4(j) of the Policy), the provider shall publish the full decision and the date of its implementation on a publicly accessible website.” Paragraph 4(j) of the Policy states in pertinent part that “All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” The Policy and the Rules on their face thus do not permit the Panel to withhold a decision from publication in its entirety. In any event, Respondent has not shown that this is an exceptional case warranting withholding from publication or even redacting the decision. The Panel has to believe, absent substantial evidence to the contrary, that the prospect of a published WIPO UDRP domain name decision tainting a Texas jury pool is somewhat overstated.
The Panel turns to the merits of the dispute. Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:
(i) Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent’s Domain Name has been registered and is being used in bad faith.
The Panel considers each element in order.
A. Identical or Confusingly Similar
Respondent does not contest the confusing similarity of the Domain Names to Complainant’s SOUTHERN COMPANY trademarks. Respondent defends instead on grounds that Complainant’s trademarks and service marks are too generic or descriptive to afford Complainant any enforceable rights in those marks. Essentially, Respondent contends that Complainant does not have the requisite legal rights in its marks to complain of confusing similarity, notwithstanding the fact of Complainant’s ownership of incontestable USPTO registrations of those marks.
The Policy specifies that a complainant demonstrate that a domain name is identical or confusingly similar to “a trademark or service mark in which the complainant has rights.” The Policy does not specify the nature or scope of rights a complainant must have in its marks. Here, Respondent contends that Complainant has none — or at least none that are enforceable under the Policy. This analysis and conclusion are unsound.
Complainant clearly has rights in its SOUTHERN COMPANY marks by reason of United States federal government registration of those marks. Complainant has obtained at least 13 registrations on the Principal Register of the United States of the mark SOUTHERN COMPANY. Those registrations reflect a federal government determination that the mark meets the legal requirements for registration, including that the mark is distinctive. 15 U.S.C. § 1052. Even marks considered to be “merely descriptive” may be registered where they have acquired distinctiveness through substantially exclusive and continuous use as a mark in commerce for at least five years prior to the claim of distinctiveness being made. 15 U.S.C. § 1052(f).
Registration on the Principal Register is considered as a matter of U.S. law to be prima facie evidence of the validity of the registered mark, of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce on or in connection with the goods or services specified in the registration. 15 U.S.C. §1115(a).
Complainant’s registrations have been on the Principal Register sufficiently long to become “incontestable.” As such, the registrations are considered as a matter of law to be conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce. 15 U.S.C. §1115(b). This conclusive evidence relates to the exclusive right to use the mark on or in connection with the goods or services specified in an affidavit or a renewal application required to be filed to maintain the registration. Id. An incontestable mark can be used to prove infringement and the law specifies the defenses that can be asserted against the claimed infringement of an incontestable mark, none of which is asserted by Respondent here.
Beyond the fact of federal registration, Complainant contends that it has used the SOUTHERN COMPANY mark to identify its services for more than 56 years, which provides substantial support for a claim of acquired distinctiveness and common law trademark rights. Respondent does not challenge the contention.
In the case that Respondent invites the Panel to follow as its primary precedent, SOUTHBank v. Media Street, WIPO Case No. D2001-0294, the panel found that
“Complainant has clearly established federal and state statutory and common law trademark rights in its SOUTHBank mark as a result of its continuous and exclusive use and promotion of its banking products under the SOUTHBank mark since 1990.” The Panel then went on to find the domain name at issue to be confusingly similar to Complainant’s trademark. Thus the SOUTHBank decision does not support Respondent’s argument that Complainant has no enforceable rights in its marks.
Respondent cites a number of other cases decided under the Policy essentially for the proposition that Complainant’s SOUTHERN COMPANY trademark and service marks are too descriptive or generic to confer enforceable rights on Complainant. The cases Respondent relies upon in this context for the most part involved much weaker showings by the complainant of trademark rights than are involved here and are thus, in the Panel’s view, readily distinguishable from the present case. E.g., The Golf Warehouse v. Golf Warehouse, NAF Case No. FA94419 (2000) (complainant did not have an established trademark); The Men’s Wearhouse, Inc. v. Brian Wick d/b/a Defaultdata.com, NAF Case No. FA020800117861 (2002) (complainant entitled to presumption of distinctiveness and secondary meaning in its federally registered marks, but disputed domain name was less than the whole of the registered marks and included words disclaimed by complainant in its registrations; the complainant failed to establish secondary meaning based on common law rights and thus failed to establish exclusive rights in the words used in the domain name); Canned Foods v. Ult. Search, NAF Case No. FA96320 (2001) (no registered mark; panel does not address validity of complainant’s common law rights); Successful Money Management Seminars v. Direct Mail Express, NAF Case No. FA96456 (2001) (no registered mark; no secondary meaning; no use of the term as a trademark); US Relocation Services v. Hastings, NAF Case No. FA96633 (2001) (no registered mark); Intermark Communications v. Free Debt Consolidation, NAF Case No. FA102613 (2002) (no registered mark; no proof of secondary meaning); Goldberg & Osborne v. The Advisory Board Forum, Inc., WIPO Case No. D2001-0711 (panel finds it unnecessary to reach question of whether complainant has trademark rights); Media West-GSI, Inc., and Gannett Satellite Information Network, Inc. d/b/a The Burlington Free Press v. EARTHCARS.COM, INC., WIPO Case No. D2000-0463 (no registered trademark; failure to prove secondary meaning).
The Panel concludes that Complainant has well-established rights in its SOUTHERN COMPANY trademark and service mark.
The Domain Names <sotherncompany.com> and <southerncopany.com> are not identical to Complainant’s mark but are certainly confusingly similar to it. See Sporty’s Farm, L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000). They appear and sound the same. The only differences are the deletion of one letter in each Domain Name which do not create distinctive new words but instead represent slight misspellings or typing errors a user might make in trying to enter Complainant’s service mark or domain name. The challenged domain names are so close in visual impression and sound to Complainant’s mark that the Internet user would be likely to have difficulty distinguishing them, and there is a strong likelihood of confusion between and among them. Lillian Vernon Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0611 (and cases cited therein); AT&T Corp. v. John Zuccarini d/b/a Music Wave and Rave Club Berlin, WIPO Case No. D2002-0440; AT&T Corp. v. John Zuccarini d/b/a Rave Club Berlin, WIPO Case No. D2001-1503; AT&T Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-1447.
There can be little doubt that the potential for confusion is created intentionally by Respondent. Respondent’s Domain Names attempt to capture a user’s likely typographical or spelling errors in attempting to access Complainant’s website and thereby to divert the user to a different and unrelated website controlled by Respondent. Such obvious “typo squatting” is evidence of the confusing similarity between the Domain Names and Complainant’s mark.
Complainant has proved the first element of its case.
B. Rights or Legitimate Interests
Complainant must show that Respondent has no rights or legitimate interests in the Domain Names. Respondent does not contest Complainant’s contentions that Respondent has not been known by the name “Southern Company,” has not acquired trademark rights in the Domain Names, and has not otherwise obtained license or permission from Complainant to register or use Complainant’s marks in the Domain Names. Respondent admits that it is acting with intent for commercial gain.
Respondent attempts to establish its rights or legitimate interests in the Domain Names on the basis that it is using the Domain Names in connection with a bona fide offering of goods or services. The central tenet of Respondent’s position is that it is entitled to register generic or descriptive words as part of a commercial domain name even where they are the same as Complainant’s incontestable federally registered trademark. Respondent cites a number of panel decisions under the Policy that tend to support this general proposition. E.g. EastbayCorporation v. VerandaGlobal.com, Inc., NAF Case No. FA0203000105983 (2002). However, in the view of this Panel, this is not what Respondent has actually done, and the difference is what undercuts Respondent’s claim of legitimacy.
Respondent, with no apparent preexisting connection to the name Southern Company, registered two Domain Names looking and sounding nearly identical to Complainant’s registered trademark and to Complainant’s registered domain name, <southerncompany.com>, but with slight misspellings—“sothern” instead of “southern” and “copany” instead of “company.” With those misspellings, Respondent has not actually registered and used common generic or descriptive words, as it contends. “Sothern” and “Copany” are not common words at all. Rather, Respondent has adopted misspelled versions not only of Complainant’s registered trademark and service mark but also Complainant’s registered domain name — which Complainant apparently registered first. Inasmuch as there is no apparent reason that an Internet user would intentionally seek or enter domain names using the erroneous spellings “sothern” or “copany,” the reasonable inference is that the only reason for Respondent to adopt the Domain Names was to exploit the similarity to Complainant’s marks and domain name and the possibility of users making mistakes when trying to reach Complainant’s website.
In the Panel’s view, Respondent’s action is tantamount to using the Domain Names to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, which is evidence of bad faith under the Policy and does not, therefore, constitute use of the Domain Names in connection with a bona fide offering of goods or services. See The Knife Company, Inc. d/b/a A.G. Russell Knives, Inc. v. LaPorte Holdings, LLC, WIPO Case No. D2005-0323; Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056; Ross-Simons, Inc. v. Henry Chan, WIPO Case No. D2003-0970; AT&T Corp. v. John Zuccarini d/b/a/ Music Wave and Rave Club Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Tencent Communications Corp., NAF Case No. FA0002000093668 (2000); AltaVista Company v. Andrew Krotov, WIPO Case No. D2000-1091. Typo squatting on another’s trademark and, in this case, domain name, in order to divert users from Complainant’s website to one’s own, completely unrelated, website, does not constitute a bona fide offering of goods or services and does not establish rights or legitimate interest in the Domain Names.
The Panel notes that the WIPO UDRP panel in the SOUTHBank case, which Respondent invites us to follow, despite noting the relative weakness of complainant’s trademark, held against the respondent on this issue of legitimate interests on grounds that the respondent had failed to show “demonstrable preparations” to use the domain name in connection with a bona fide offering of goods or services and had thus not shown rights or legitimate interests in the domain name. SOUTHBank v. Media Street, WIPO Case No. D2001-0294.
The Panel finds that the second element of the UDRP has been established.
C. Registered and Used in Bad Faith
Complainant must establish that Respondent registered and is using the Domain Names in bad faith, which Respondent denies. Complainant’s principal contention here is that Respondent in using the Domain Names has “intentionally attempted to attract, for commercial gain, Internet users to [its] website . . . by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.” Paragraph 4(b)(iv) of the Policy. Under the Policy, such conduct constitutes evidence of bad faith registration and use of the domain names at issue.
As discussed above, the Panel has concluded that the Domain Names are confusingly similar to Complainant’s trademarks. They are also confusingly similar to Complainant’s established domain name, which is substantially identical to Complainant’s trademarks. There is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. See Sporty’s Farm LLC v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319; Pfizer Inc. v. NA, WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
In the present case, each of the Domain Names was registered many years after Complainant began using its service and trademarks, more than five years after Complainant obtained federal registration of the marks, and after Complainant registered its own domain name using its trademark. See Sporty’s Farm, 202 F.3d at 498. Despite Respondent’s protestations to the contrary, the facts support a reasonable inference that Respondent registered its Domain Names with full knowledge of Complainant’s marks and with the intent to create its own confusingly similar domain names based on likely typographical errors or misspellings of Complainant’s mark or domain name in order to divert traffic to Respondent’s own unrelated websites for commercial gain. Sporty’s Farm, 202 F.3d at 498; Lillian Vernon Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0611; Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056; AT&T Corp. v. John Zuccarini d/b/a Music Wave and Rave Club Berlin, WIPO Case No. D2002-0440. In the Panel’s view, the use of one-letter misspellings of the words in Complainant’s trademark, service mark and domain name to create what are in essence “non-words” in Respondent’s Domain Names negates entirely Respondent’s contention that it was using common generic words in good faith with no intent to exploit Complainant’s marks or domain name. It would make no sense whatsoever, in the Panel’s opinion, for Respondent to use the misspelled words that it did in the Domain Names unless Respondent was trying to play off of Complainant’s marks and domain name and their associated fame and goodwill. No Internet user would intentionally go to or type in the words “sothern” or “copany” intending to find Respondent’s website.
The Panel’s decision in National Association of Professional Baseball Leagues, Inc. d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011, makes the point concerning typosquatting very well:
“[M]ere registration of a common word that also happens to be a trademark requires additional evidence before bad faith may be found. Typosquatting, however, is the intentional misspelling of words with intent to siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith. Where the misspelled word or words are generic, there is no remedy under the Policy. Where, however, they are trademarks, even though they may also be generic in a different context from that for which they are registered and/or used, […] nevertheless, given the reputation of those marks in another field with which the mark is associated and where the mark is not clearly generic, then the intentional registration and use of the misspelled word or words […] clearly manifests an intent to capitalize on the mark and constitutes bad faith under the Policy.”
The Panel thus concludes that Respondent registered and is using the Domain Names, which are confusingly similar to the trade and service marks and domain name of Complainant, to capture Internet users and divert them to websites unrelated to the Complainant by exploiting user confusion and mistakes and that Respondent is doing so for its own commercial gain. This conduct constitutes bad faith registration and use of the Domain Names. Lowen Corporation d/b/a/ Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430; AT&T Corp. v. John Zuccarini d/b/a Music Wave and Rave Club Berlin, WIPO Case No. D2002-0440; National Association of Professional Baseball Leagues, Inc. d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011; AT&T Corp. v. John Zuccarini d/b/a Rave Club Berlin, WIPO Case No. D2001-1503; AltaVista Company v. Andrew Krotov, WIPO Case No. D2000-1091.
The Panel’s decision in SOUTHBank v. Media Street, WIPO Case No. D2001-0294, does not support Respondent’s position on this point. The Panel in that case denied the complaint on grounds that complainant failed to establish the bad faith element of its case but did so only because the complainant failed to prove factually its contentions that respondent had registered the domain names primarily for the purpose of selling the registration to complainant and that respondent had registered the domain name to prevent complainant from reflecting its trademark in a domain name. Complainant does not assert either of those factors as evidence of bad faith in the present case.
Given the foregoing, the Panel finds it unnecessary to address Complainant’s other contentions concerning Respondent’s bad faith.
The Panel concludes that Respondent registered and used the Domain Names in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <sotherncompany.com> and <southerncopany.com> be transferred to Complainant.
John R. Keys, Jr.
Dated: August 24, 2007