WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Southern California Gas Company v. Above.com Domain Privacy/ Transure Enterprise Ltd, Host Master
Case No. D2012-1492
1. The Parties
Complainant is Southern California Gas Company of Los Angeles, California, United States of America, represented by Sideman & Bancroft LLP, United States of America.
Respondents are Above.com Domain Privacy of Beaumaris, Australia and Transure Enterprise Ltd, Host Master of Tortola Virgin Islands (British), United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <mysocalgas.com> (the “Domain Name”) is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2012. On July 24, 2012, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 31, 2012, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 31, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 1, 2012.
The Center verified that the Complaint together with the amended 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 August 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 23, 2012.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on August 29, 2012. 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 evidence submitted by Complainant, Complainant’s principal registered trademark is SOCALGAS, registered on October 18, 2005, having been in continuous use since 1996. Complainant is a California public utility serving more than 20 million consumers. Complainant has a website at “www.socalgas.com” that current and prospective customers access with general information about the company as well as individual account information. The trademark registration of Complainant has been issued prior to the registration of the Domain Name.
The Domain Name <mysocalgas.com> was registered on May 27, 2009.
5. Parties’ Contentions
Complainant submits that the Domain Name is confusingly similar to the SOCALGAS trademark as it contains the SOCALGAS trademark in its entirety. According to Complainant, in view of Complainant’s trademark, Respondent has no rights or legitimate interests in respect of the Domain Name. Internet users are directed to a website which is a parking page displaying pay-per-click links. Respondent uses the Domain Name without permission from Complainant for commercial gain and with the purpose of benefiting from the reputation of the trademark of Complainant. Complainant submits that Respondent has registered and is using the Domain Name in bad faith as Respondent no doubt had knowledge of the well-known trademark of Complainant and is intentionally misleading consumers.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant proves each of the following three elements to obtain an order that the Domain Name should be transferred:
(i) the Domain Name registered by Respondent 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) the Domain Name has been registered and is being used in bad faith.
The Panel is satisfied that the registrant of record for the Domain Name is Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied by Complainant in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.
Complainant has established that it is the owner of a trademark registration for SOCALGAS. The Panel notes that Complainant’s registration predates the creation date of the Domain Name.
The Domain Name <mysocalgas.com> incorporates the entirety of the SOCALGAS trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety. The addition of the common, descriptive or non-distinctive element “my” is insufficient to avoid a finding of confusing similarity. Moreover, the common and generic term “my” adds to the potential confusion as the word ”my” is a common format for a secondary domain name for a utility website that supports online account access.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. This is particularly true as Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of Complainant. Based on the evidence provided by Complainant, Respondent redirects Internet users to a pay-per-click parking website displaying links to energy and utility related sites and advertisements. Respondent makes use of the value of the SOCALGAS trademark and the likelihood of confusion with the trademark of Complainant, which cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. Respondent is not commonly known by the Domain Name nor has it acquired trademark rights.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. The trademarks of Complainant have been existing for a long time. Respondent knew or should have known that the Domain Name included Complainant’s SOCALGAS trademark.
The Panel finds that the above elements mean that Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, as per paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <mysocalgas.com> be transferred to Complainant.
Dinant T. L. Oosterbaan
Dated: September 5, 2012