World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mississippi Power Company, The Southern Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc.

Case No. D2010-1547

1. The Parties

The Complainant is collectively Mississippi Power Company of Gulfport, Mississippi, United States of America and The Southern Company of Atlanta, Georgia, United States of America, represented by Troutman Sanders, LLP.

The Respondents are Domain Name Proxy, LLC of Scottsdale, Arizona, United States of America and Navigation Catalyst Systems, Inc. of El Segundo, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mississippipowercompany.com> is registered with Basic Fusion, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2010. On September 14, 2010, the Center transmitted by email to Basic Fusion, Inc. a request for registrar verification in connection with the disputed domain name. On September 16, 2010, Basic Fusion, Inc. transmitted its verification response to the Center by email disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 21, 2010, notifying the Parties of the change in Registrant information. Complainant filed an amendment to the Complaint on September 21, 2010.

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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on September 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 14, 2010.

The Center appointed Clark W. Lackert as the sole panelist in this matter on November 10, 2010. 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

The collective entities defined as “Complainant” are providers of energy-related services in the United States of America. Mississippi Power Company is a wholly owned subsidiary of The Southern Company and has provided electricity to businesses and residents of the State of Mississippi in the United States for 85 years. Mississippi Power Company owns one United States registration for the trademark MISSISSIPPI POWER (Registration. No. 2,132,087) claiming use since 1977. The Southern Company owns two United States registrations for the trademark MISSISSIPPI POWER A SOUTHERN COMPANY (Registration Nos. 156,486 and 2,338,657), each claiming use since 1996. In addition to the aforementioned trademark registrations, Complainant owns the <mississippipower.com> domain name and operates an Internet website at this domain.

Based upon the information in the Complaint and the verification response provided by the concerned Registrar, Respondent is a company by the name of Navigation Catalyst Systems, Inc. located in El Segundo, California in the United States of America.

5. Parties’ Contentions

A. Complainant

Complainant claims to be one of the largest generators of electricity and one of the largest providers of energy-related services in the United States of America. Complainant owns United States trademark registrations for MISSISSIPPI POWER and MISSISSIPPI POWER A SOUTHERN COMPANY and claims to have exclusively used the name “Mississippi Power Company” as its corporate name and trade name continuously for at least 85 years to identify its goods and services. The Complaint cites numerous awards Complainant received in recognition of the services provided under its trademarks; as well as revenues of over one billion dollars (US) as bases for a claim of significant fame and presence of the Complainant and its trademarks in the State of Mississippi and surrounding region. Complainant maintains that it provides online bill payment and information services for its customers on its website located at the <mississippipower.com> domain name.

B. Respondent

No response to the Complaint was filed.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name <mississippipowercompany.com> is confusingly similar to the MISSISSIPPI POWER and MISSISSIPPI POWER A SOUTHERN COMPANY trademarks in which Complainant has rights.

The disputed domain name is comprised of the entirety of one of Complainant’s trademarks, MISSISSIPPI POWER, adding only the generic term “company.” Further, the addition of the generic top-level domain “.com” is without legal significance when comparing the domain name at issue to Complainant’s registered trademark. See e.g. Edmunds.com, Inc. v. Bestinfo, WIPO Case No. D2006-0573 citing The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance).

Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There is no evidence in the record indicating that Respondent has any rights or legitimate interests in the terms “Mississippi”, “power” or “company”, which constitute the disputed domain name <mississippipowercompany.com>, nor is there evidence in the record indicating that Respondent has any rights to or legitimate interest in the disputed domain name as a whole.

Accordingly, Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There is evidence suggesting that the links displayed on Respondent’s website are efforts to trade off the goodwill of Complainant’s trademarks. Specifically, Respondent’s website consists primarily of links relating to utility services similar to those provided by Complainant. The incorporation of third party links regarding services competitive to those provided under another party’s trademark supports a finding that a domain name registrant was aware of the other party’s mark at the time the domain name was registered. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728.

The content of the disputed domain name suggests to the Panel that Respondent is aware of Complainant. Specifically, the record shows that Respondent’s website incorporates links relating to utility services including links titled “Southern Company” and “Mississippi Power”. Registration and use of a domain name incorporating a Complainant’s trademark and providing links which expressly refer to services provided under that Complainant’s trademark has been held to be indicative of a Respondent’s knowledge of the services provided under the trademark. See Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517.

By registering the disputed domain name <mississippipowercompany.com> and offering links to third party services directly competitive with those of Complainant, Respondent is diverting traffic from Complainant’s <mississippipower.com> domain name which was registered approximately seven (7) years prior to the disputed domain name in 1998. There is no evidence in the record to refute this contention. Registration of a confusingly similar domain name for the purpose of deriving pay-per-click advertising revenue from links offering competitive products or services has been found in prior cases to be indicative of bad faith in violation of paragraph 4(b)(iv) of the Policy. See, e.g., Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474 and S.N.C. Jesta Fontainebleau v. Po Ser, WIPO Case No. D2009-1394.

Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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 name <mississippipowercompany.com> be transferred to Mississippi Power Company, one of the companies comprising Complainant.

Clark W. Lackert
Sole Panelist
Dated: December 10, 2010

 

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