WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Southern Company, Georgia Power Company and Gulf Power Company v. Marketing Total S.A., Keyword Marketing, Inc., and Domain Drop S.A.
Case No. D2007-1048
1. The Parties
The First Complainant is The Southern Company, Atlanta, Georgia, United States of America.
The Second Complainant is Georgia Power Company, Atlanta, Georgia, United States of America.
The Third Complainant is Gulf Power, Pensacola, Florida, United States of America.
Together the First, Second and Third Complainants are referred to as the “Complainants”.
The Complainants are represented by Troutman Sanders LLP, Atlanta, United States of America.
The First Respondent is Marketing Total S.A.
The Second Respondent is Keyword Marketing Inc.
The Third Respondent is Drop Domain S.A.
Together the First, Second and Third Respondents are referred to as the “Respondents”.
The Respondents are all of P.O. Box 556, Main Street, Charlestown, KN, West Indies.
2. The Domain Names and Registrars
The disputed domain name, <southencompany.com> (the “First Domain Name”) is registered with CapitolDomains LLC (the “First Registrar”). The disputed domain name, <georgaipower.com> (the “Second Domain Name”) is registered with DomainDoorman LLC (the “Second Registrar”). The disputed domain name, <georgiapowe.com> (the “Third Domain Name”) and the disputed domain name, <georgiapwer.com> (the “Fourth Domain Name”) are both registered with BelgiumDomains LLC (the “Third Registrar”). The disputed domain name, <gufpower.com> (the “Fifth Domain Name”) is registered with the First Registrar. Together the disputed domain names are referred to as the “Domain Names” and together the registrars are referred to as the “Registrars”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2007. On July 20, 2007, the Center transmitted by email to the Registrars requests for registrar verification in connection with the First, Second, Fourth and Fifth Domain Names. On July 21, 2007, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants of those Domain Names as set out in Section 2 above and providing the contact details.
In response to a request from the Complainant for a 15 day suspension of this administrative proceeding, on September 13, 2007, the Center granted the suspension sought. There then followed email communications between the Center and the Complainant over the registration details of one of the domain names included in the original Complaint, but not referred to above, as a result of which that domain name was deleted from the Complaint and on October 3, 2007, an amendment to the Complaint was filed featuring the addition of the Third Domain Name.
On October 4, 2007, the Center transmitted by email to the Third Registrar a request for registrar verification in connection with the Third Domain Name. On the same day the Third Registrar transmitted by email to the Center its verification response confirming that the Third Respondent is listed as the registrant of the Third Domain Name 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 October 10, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2007.
The Center appointed Tony Willoughby as the sole panelist in this matter on November 12, 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.
The Complainants contend that the Respondents should be treated as one. They all have the same PO Box Number address in Charlestown in the West Indies. The Respondent has not challenged that contention and the Panel accepts that on the evidence before the Panel it is highly probable that the Respondents are in fact different names for the same entity. In the circumstances the Panel proposes to treat the Respondents as one.
Similarly, the Complainants are all members of the same group of companies and, for the most part, the Panel proposes to treat them as one.
4. Factual Background
The First Complainant is one of the largest producers of electricity and providers of energy-related services in the United States of America. The Second and Third Complainants are wholly owned subsidiaries of the First Complainant and supply electricity to residents of Georgia and Florida respectively.
The Complainants trade under the names Southern Company, Georgia Power and Gulf Power respectively and are the registered proprietors of United States Service Mark registrations of and/or including the names SOUTHERN COMPANY, GEORGIA POWER and GULF POWER. In the case of each of those marks the first use claims date back at least 30 years and the earliest of the registrations in each case date back to 1998.
None of the Domain Names was registered prior to 2005. The Domain Names are all connected to websites having web pages of a substantially identical design and all featuring sponsored links some of which relate to one or more of the Complainants and some of which have no connection at all with the Complainants.
During 2006 and 2007 the First and Second Respondents have each featured as respondents in several previous WIPO UDRP cases.
5. Parties’ Contentions
The Complainants contend that the Domain Names are identical or confusingly similar to the Complainants’ registered trademarks, trademarks in which the Complainants also claim common law rights.
The Complainants contend that the Respondents have no rights or legitimate interests in respect of any of the Domain Names, contending that none of the examples of rights and legitimate interests set out in paragraph 4(c) of the Policy applies.
Finally, the Complainants contend that the Domain Names were registered and are being used in bad faith. The Complainants’ identify the Domain Names as classic instances of “typosquatting”, each of them being a slight mis-spelling of one of the Complainants’ trademarks. The Complainants also point to the previous WIPO UDRP decisions in cases against the first two Respondents and contend that the current Domain Names are all part of a pattern. The Complainants exhibit long lists of other similar domain names which are said to be typosquatting names held by the Respondents.
The Complainants contend that the Respondents are disrupting the business of the Complainants, damaging the distinctiveness of the Complainants’ trademarks, infringing the Complainants’ trademark rights, confusing Internet users and profiting unjustly from their use of the Domain Names.
The Respondents did not reply to the Complainants’ contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainants must prove that:
(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) The Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered in bad faith and are being used in bad faith.
B. Identical or Confusingly Similar
Each of the Domain Names comprises a slight mis-spelling of one or other of the Complainants’ trading names and registered trademarks, SOUTHERN COMPANY, GEORGIA POWER and GULF POWER, together with the generic domain suffix.
The Panel finds that each of the Domain Names is confusingly similar to a trademark or service mark in which the Complainants have rights.
C. Rights or Legitimate Interests
The Complainants contend that the Respondents’ use of the Domain Names to connect to parking pages featuring sponsored links, some of which relate to the Complainants and some of which are general links to websites concerned with a wide variety of other goods and services cannot be categorized as a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the Policy. The Complainants contend that the Domain Names and the use to which they are put by the Respondents is calculated to lead people to believe that the Respondents and their websites are in some way associated with the Complainants and that the Respondents are causing this deception of Internet users intentionally for the purpose of commercial gain.
The Complainants assert that the Respondents have no connection of any kind with any of the Complainants and that none of the examples of rights and legitimate interests set out in paragraph 4(c) of the Policy is applicable.
The Panel is satisfied that the Complainants have made out a prima facie case under this head, sufficient to call for an answer from the Respondents. The Respondents have not answered the Complainants’ allegations.
In these circumstances, and the Panel being unable to think of any reason why the Respondents could reasonably be said to have rights or legitimate interests in respect of any of the Domain Names, the Panel finds that the Respondents have no rights or legitimate interests in respect of the Domain Names.
D. Registered and Used in Bad Faith
The Complainants contend that when the Respondents registered the Domain Names they were fully aware of the existence of the Complainants and their widely known trademarks, SOUTHERN COMPANY, GEORGIA POWER and GULF POWER, and this allegation has not been challenged by the Respondents.
The Panel agrees that for someone to register a collection of domain names, which are slight mis-spellings of the widely known trademarks of one group of companies, cannot have been accidental.
The Complainants contend that the Respondents’ websites are parking/directory sites featuring sponsored links via which the Respondents will be receiving “pay per click” or referral income. The Complainants contend that the majority of visitors to the Respondents’ websites are likely to be Internet users looking for the official sites of one or other of the Complainants.
The Complainants contend that the Respondents, in doing what they are doing, are disrupting the business of the Complainants, damaging the distinctiveness of the Complainants’ trademarks, infringing the Complainants’ trademark rights, confusing Internet users and profiting unjustly from their use of the Domain Names.
The Complainants have produced evidence (in the form of lists of domain names said to be owned by the Respondents and references to previous WIPO UDRP decisions against the Respondents) to show that the Respondents are in the business of profiting from typosquatting of this kind.
In Debevoise & Plimpton LLP v. Marketing Total S.A., WIPO Case No. D2007-0451 the panelist stated:
“The Complainant contends that the Respondent “is a serial cybersquatter who regularly uses domain names that are well-known trademarks or misspellings of well-known trademarks as landing pages to misdirect Internet users to third-party websites.” In support the Complainant lists a number of WIPO and NAF cases in which the Respondent has been found to have acted in bad faith and has been required to transfer the disputed domain names.
In an attempt to hide the extent of its cyber squatting, the Complainant says that the Respondent has “squatted other domain names using aliases. Debevoise is aware of at least two aliases regularly used by the Respondent….All three of these entities are listed as having the identical postal address.” Again, the Complainant lists a number of WIPO and NAF decisions where those other entities - Domain Drop S.A. and Keyword Marketing, Inc. - were respondents in proceedings based on cybersquatted domain names: in all nearly 20 WIPO and NAF cases are listed.
In Beds Direct Nationwide Limited v. Keyword Marketing, Inc., WIPO Case No. D2007-0406 the panelist included under Factual Background the following passage:
“The Respondent registered the Domain Name on July 26, 2005. Nothing is known of the Respondent other than that it has been identified as a respondent in a series of UDRP decisions, including:
1. The Pillsbury Company v. Keyword Marketing, Inc., NAF Claim No. FA0608000780315 (<pillsburystore.com>);
2. Edmunds.com, Inc. v. Web Advertising, Corp. / Keyword Marketing, Inc., WIPO Case No. D2006-1380 (<edmundscar.com> and <edmundz.com>);
3. Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137 (<giata-hotelguide.com>);
4. La Société des Autoroutes Paris Rhin Rhône v. Keyword Marketing Inc., WIPO Case No. D2006-1270 (<parirhinrhone.com>);
5. Metropolitan Life Insurance Company v. Keyword Marketing, Inc., NAF Claim No. FA0612000874259 (<meylife.com>);
6. Stokes Lawrence, P.S. v. Keyword Marketing, Inc., NAF Claim No. FA0701000894224 (<stokeslawrence.com>);
7. American Psychological Association v. Keyword Marketing, Inc., NAF Claim No. FA0702000912458 (<myapa.org>);
8. Enterprise Rent-A-Car Company v. Keyword Marketing, Inc., NAF Claim No. FA0702000918604 (<enterprisescars.com>);
9. General Mills Inc. v. Keyword Marketing, Inc., NAF Claim No. FA0702000921284 (<fruitroll-ups.com>).
Each of these cases resulted in a decision adverse to the Respondent.”
In the absence of any challenge to the Complainants’ allegations, allegations which seem to the Panel to be well-founded, the Panel finds that the Domain Names and each of them were registered and are being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
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 be transferred as follows, the First Domain Name, <southencompany.com>, to the First Complainant, The Southern Company, the Second, Third and Fourth Domain Names, <georgaipower.com>, <georgiapowe.com> and <georgiapwer.com>, to the Second Complainant, Georgia Power Company, and the Fifth Domain Name, <gufpower.com>, to the Third Complainant, Gulf Power Company.
Dated: November 26, 2007