WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Alabama Power Company and The Southern Company v. Purple Bucquet / PrivacyProtect.org
Case No. D2010-1548
1. The Parties
The Complainants are Alabama Power Company of Alabama, United States of America; and The Southern Company, of Atlanta, Georgia, United States of America represented by Troutman Sanders, LLP, United States of America.
The Respondent is Purple Bucquet of Panama City, Panama / PrivacyProtect.org, Domain Admin, Moergestel, Netherlands.
2. The Domain Name and Registrar
The disputed domain name <alabamapowercompany.com> is registered with Power Brand Center LLC.
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 Power Brand Center LLC a request for registrar verification in connection with the disputed domain name. Following several reminders Power Brand Center LLC transmitted by email to the Center on September 21, 2010 a partial verification response with confirmation that the disputed domain name would remain under registrar “lock” throughout the pendency of the administrative proceeding and stating that “the privacy shield had been removed pending the outcome of this proceedings”. The Center sent an email communication to the Complainants on September 29, 2010 providing the registrant and contact information in the WhoIs database of the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on September 30, 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 the Respondent of the Complaint, and the proceedings commenced on October 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2010.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on November 8, 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
According to the Complainants, Alabama Power Company, a utility company supplying electricity in Alabama, is a wholly owned subsidiary of Southern Company, which produces electricity and provides energy related services in the United State of America. The scale of the operations of the Complainants’ companies is that Southern Company has about $24 billion in assets and Alabama Power Company has about 1.4 million residential customers in Alabama and has operated for about a century.
Alabama Power Company is the owner of the following trademarks or service marks registered on the principal register of the United States Patent and Trademark Office (USPTO):
ALABAMA POWER, registration number 2156129, classes 39, 40, registered May 12, 1998;
ALABAMA POWER A SOUTHERN COMPANY with design, registration number 2174534, classes 100, 105, registered July 21, 1998;
ALABAMA POWER A SOUTHERN COMPANY with design, registration number 2338654, classes 22, 39, registered April 4, 2000.
These trademarks may be referred to below collectively as the “ALABAMA POWER trademarks”.
The Complainants operate a website at the URL “www.alabamapower.com”.
No factual information is available about the Respondent other than as provided in the registration documentation of the disputed domain name.
5. Parties’ Contentions
The Complainants have provided copies of USPTO registration documents in support of their claim to have rights in the trademarks listed in section 4 above. It is contended that the disputed domain name is identical to the Complainants’ trademark ALABAMA POWER except for the addition of the generic word “company”.
The Complainants further contend that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of or connected with the Complainants. The Respondent has never been known by the name Alabama Power Company, does not operate a business of that name, and has not used the name for any bona fide offering of goods or services.
It is contended furthermore that the Respondent has not acquired trademark or service mark rights for the ALABAMA POWER trademarks. The Respondent is not making any legitimate noncommercial or fair use of the disputed domain name but has used it such that users who seek the Complainants have been diverted misleadingly to the website of the Respondent for purposes of commercial gain.
The Complainants further contend that the disputed domain name was registered and is used in bad faith. The disputed domain name attracts people looking for the website of “Alabama Power”. Once at the Respondent’s website, viewers are confronted with a number of links, including one labelled “Alabama Power Company”, that lead to external websites offering goods or services unrelated to, or in competition with, the Complainants. The Complainants contend that viewers may be misled into believing that the Respondent’s website has the endorsement of the Complainants, and contend that the Respondent receives a commission from advertisers for directing viewers to external links.
The Complainants say that the Respondent’s actions have the effect of taking customers away from the Complainants’ website.
The Complainants assert that the Respondent has established the disputed domain name with constructive knowledge of the Complainants’ trademarks, and states its position under United States federal law.
A number of citations have been provided of previous decisions under the UDRP that the Complainants wish the Panel to consider as possible precedent.
The Complainants request the transfer of the disputed domain name, and such other and further relief as the Panel deems appropriate.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainants have made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainants have produced evidence satisfactory to the Panel of their rights in the registered trademarks ALABAMA POWER and ALABAMA POWER A SOUTHERN COMPANY. The disputed domain name, <alabamapowercompany.com>, is not identical to either ALABAMA POWER or ALABAMA POWER A SOUTHERN COMPANY. The effective components of the disputed domain name are, however, “alabama” and “power”, and the word “company” is found to be descriptive and not sufficient to distinguish the disputed domain name from the trademark ALABAMA POWER. The gTLD suffix “.com” is generally considered to be of no consequence in the determination of confusing similarity under the Policy. Accordingly the Panel finds confusing similarity within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainants have asserted that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainants certify that that they have not licensed or permitted the Respondent to make any use of their trademarks or to register a corresponding domain name. In particular the Complainants have addressed the possible, but not limited, defences available to the Respondent in the terms of paragraph 4(c) of the Policy, and have asserted that the Respondent has not used the disputed domain name in connection with any bona fide supply of goods or services; has not as an individual or business been known by the disputed domain name or any similar name; and has not made any noncommercial or fair use of the disputed domain name.
The Respondent has the opportunity to establish a right or legitimate interest in the disputed domain name in the terms of paragraph 4(c) of the Policy or in any other way that may satisfy the Panel, but has not replied. The Panel finds for the Complainants under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainants are required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location.”
An examination of the Respondent’s website to which the disputed domain name resolves, as captured by the Complainants on two dates in August 2010 and produced in evidence, presents in initial impression of the website of a power company. Under the prominent heading “Alabamapowercompany.com” are eight power-related headings ranging from “Cheap Electricity” to “Solar Panel”, that, the Panel has verified, lead to further links. On the main pages ten links are exhibited under the heading “Emergency Power”. A number of other links and advertisements indicate non-power goods and services such as teeth-whitening, real estate, hunting and items for sale.
The Respondent’s website portrays the appearance of a standard Internet business operation known colloquially as click- through or pay per click, in which the operator of the website is paid a small commission by advertisers for every viewer who follows a link to an advertiser. A pay per click style of business may be entirely legitimate and is adopted for the funding or subsidy of many genuine providers of information or services. The revenue accruing to the operator of the website is proportional to the number of viewers so referred, and in turn depends on attracting viewers to the website initially.
In the absence of any explanation by the Respondent, and taking into account such evidence as the Respondent’s provision of a link labelled “Alabama Power Company”, the Panel finds it inescapable, on balance, that the Respondent was aware of the Complainants’ trademarks. It may reasonably be concluded that the Respondent has adopted the disputed domain name, in which it has been found to have no legitimate interest, because it is predictable that a proportion of persons who wish to visit the Complainants’ own website, “www.alabamapower.com”, will instead find their way to the Respondent’s website. This may happen if, for example, the person tries to remember the Complainants’ website URL but mistakenly adds the word “company”, or does a search and, by virtue of the search terms inserted, is able to select the Respondent’s website from the results instead of the Complainants’. Viewers so led to the Respondent’s website may be confused initially into thinking it is the legitimate website of the Complainants or has their endorsement.
Thus in the terms of paragraph 4(b)(iv) of the Policy, the Panel finds on the evidence and on the balance of probabilities that the Respondent has intentionally intended to attract users by confusion with the Complainants’ trademark as to the endorsement of the Respondent’s website, and has done so for the commercial purpose of deriving revenue through the provision of links to advertisers. The Panel finds that the Respondent has registered and has used the disputed domain name 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 name <alabamapowercompany.com> be transferred to the Complainants.
Dr. Clive N.A. Trotman
Dated: November 30, 2010