WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Southern California Gas Company v. Private Registrations Aktien Gesellschaft / PrivacyProtect.org
Case No. D2012-1560
1. The Parties
The Complainant is Southern California Gas Company of Los Angeles, California, United States of America, represented by Sideman & Bancroft LLP, United States of America (“US”).
The Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines / PrivacyProtect.org of Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <myaccountsocalgas.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2012. On August 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 2012, the Registrar transmitted by email to the Center its verification response 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 the Complainant on August 6, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 7, 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 the Respondent of the Complaint, and the proceedings commenced on August 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2012.
The Center appointed Alexandre Nappey as the sole panelist in this matter on September 13, 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
The Complainant is Southern California Gas Company (SoCalGas), a California Public utility headquarted in Los Angeles, US. The Complainant serves natural gas to more than 20 million consumers.
The Complainant is the holder of a number of registered trademarks based on or incorporating the word “SoCalGas”, among which are the following:
- US trademark SOCALGAS, registration no. 3,008,009 dated October 18, 2005,
registered in classes 35 and 39;
- US trademark SOCALGAS ENVOY, registration no. 3,114,799 dated July 11, 2006,
registered in classes 35 and 42.
The Complainant also owns various domain names consisting or including “SoCalGas”, notably the following generic Top Level Domain (gTLD):
which operates the Complainant’s website where current and prospective clients access general information about the company as well as individual account information, especially from the third level domain <myaccount.socalgas.com>
The Complainant learned that the disputed domain name was registered on July 10, 2006, and is used since then to display sponsored links to energy related sites and advertisements.
Nothing is known about the Respondent except for the identification details provided in the publicly available WhoIs for the disputed domain name.
5. Parties’ Contentions
The Complainant first claims that the disputed domain name is confusingly similar to its prior trademark rights.
The disputed domain name incorporates the Complainant’s distinctive trademark SOCALGAS, which creates confusing similarity between the mark and the disputed domain name.
Concerning rights or legitimate interests, the Complainant states that it has not authorized the Respondent to use the Complainant’s trademark in a domain name or in any fashion whatsoever. The Respondent is not engaged in any legitimate or bona fide use of the disputed domain name: by merely presenting links to itself or advertisements on its page in a common “parked” webpage, the Respondent lacks any bona fide offering of goods or services.
With respect to bad faith registration and use of the disputed domain name, the Complainant claims that the creation of a domain name without permission from or association with the trademark owner shows typical behavior of a cybersquatter. The disputed domain name was indeed registered after the Complainant started use and even obtained rights in the trademark SOCALGAS.
The advertisements available on the parking page operated under the disputed domain name are similar to those a customer would look for on a website operated by public utilities (information, online bill pay services, account information).
The Complainant claims that the Respondent is attempting to take advantage of the Complainant’s reputation by capturing traffic from Internet users looking for the Complainant.
Consequently, the Complainant seeks transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate.”
Having consideration to the parties’ contentions, the Policy, the Rules, the Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above mentioned elements are the following.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns exclusive trademark rights with respect to the mark SOCALGAS which is merely a contraction of its business name.
The Complainant does not specifically support the assertion concerning its unregistered trademark rights in SOCALGAS due to the use of that mark since the middle of the nineties; but the trademark has been registered in the US at the latest in 2005, prior to the registration of the disputed domain name.
The trademark SOCALGAS is a distinctive sign and the Complainant has goodwill under that name.
The disputed domain name merely adds the possessive pronoun and associated combination of words “my account” to the trademark SOCALGAS.
The Panel finds that the words that are added to the trademark do not sufficiently distinguish the disputed domain name from the trademark SOCALGAS.
As ruled in Wal-Mart Stores, Inc v. Kuchora, Kal, WIPO Case No. D2006-0033, “if a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words.”
Previous UDRP panels have ruled that the addition of the locution “my account” to a trademark in a domain name is confusingly similar. See, e.g., Pacific Life Insurance Company and Pacific Life and Annuity Company v. Transure Enterprise Ltd., NAF Claim No. 1218169 (<myaccountpacificlife.com>).
Finally, the Panel notes the disputed domain name is quite identical to the third level domain used by the Complainant to allow secured access to its clients online: <myaccount.socalgas.com>.
The Panel concludes that the disputed domain name is confusingly similar to the trademark of the Complainant in which it has rights.
Therefore the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant is required to prove that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Complainant claims that it has not granted any rights to the Respondent to use the trademark SOCALGAS in the disputed domain name.
The Complainant also contends that the Respondent is operating a parking page displaying qualified sponsored links with a pay-per-click system; hence the Respondent cannot be making a noncommercial or fair use of the disputed domain name.
In anticipation of any assertion by the Respondent of having any rights or legitimate interests in terms of paragraph 4(c) of the Policy, the Complainant asserts that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and has registered it in bad faith.
The Complainant has made a prima facie case that the Respondent has no rights or legitimate interests. The Respondent had the opportunity to rebute, using the examples of paragraph 4(c) of the Policy, or otherwise, the prima facie case made by the Complainant. However, the Respondent has made no reply and there is nothing in the evidence to suggest that it could establish any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the confusing similarity of the disputed domain name with the Complainant’s SOCALGAS trademark, the fact that the Complainant has an established reputation under its trademark which has been used for years, the fact that the disputed domain name was created on July 10, 2006, after the trademark SOCALGAS was registered, as stated by the Complainant and supported by the evidence submitted, the Panel is satisfied the Respondent registered the disputed domain name in order to take unfair advantage of the Complainant’s goodwill and reputation.
On the balance of probabilities the Panel finds that the Complainant’s SOCALGAS mark and its associated reputation and goodwill were known to the Respondent when the disputed domain name was selected and registered in order to take unfair advantage of the Complainant’s reputation.
Furthermore the Panel finds that the Respondent is knowingly using the disputed domain name to resolve to a website on which there are sponsored links and advertisements that are causing confusion among Internet users and taking an unfair benefit from Internet traffic that associates the disputed domain name with the Complainant’s business. The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant has therefore established the third element of the test in paragraph 4(a) 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 disputed domain name <myaccountsocalgas.com> be transferred to the Complainant.
Dated: September 27, 2012