WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sempra Energy Corporation v. WhoisGuard Protected, WhoisGuard, Inc. / Adeyemi Akinbade, Akerele Microsmail
Case No. D2018-0875
1. The Parties
The Complainant is Sempra Energy Corporation of San Diego, California, United States of America (“United States”), represented by Sideman & Bancroft LLP, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama City, Panama / Adeyemi Akinbade, Akerele Microsmail of Agungi, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <semprautilitie.com> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2018. On April 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 19, 2018, the Registrar 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 the Complainant on April 20 2018, 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 April 24, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2018.
The Center appointed David Taylor as the sole panelist in this matter on June 1, 2018. 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, Sempra Energy Corporation, is a company founded in 1998 which develops and operates energy infrastructure projects, operates energy utilities and provides related products directly to energy consumers throughout North and South America. The Complainant has registered trade mark rights in the term SEMPRA, including but not limited to:
- European Union Trade Mark No. 002418911, SEMPRA, registered on August 22, 2003 for services in classes 35, 36, 37, 39, 40 and 42,
- United States Trade Mark No. 3874530, SEMPRA, registered on November 9, 2010 for services in class 39 and
- United States Trade Mark No. 3874531, SEMPRA, registered on November 9, 2010 for services in class 40.
The Respondent appears to be an individual based in Nigeria. No additional information about the Respondent is known.
The Domain Name was registered by the Respondent on March 26, 2018. It was being used by the Respondent to send emails misrepresenting itself as the employees of the Complainant.
5. Parties’ Contentions
The Complainant asserts that it has developed a strong name and reputation within the industry and among members of the consuming public as a leading developer of energy infrastructure and utility provider. The Complainant contends that its SEMPRA trade marks are distinctive indicators of the source of its goods and services. As evidence, the Complainant has supplied a list of its trade mark registrations along with copies of representative registration certificates for the SEMPRA trade marks worldwide.
Furthermore, the Complainant claims to be the owner of a number of generic Top-Level Domain (“gTLD”) domain names which contain SEMPRA trade marks and were registered years prior to the date Respondent registered the Domain Name. The Complainant submits that these domain names, registered between 1997 and 2004, include, but are not limited to, <sempra.com>, <semprautilities.com>, <sempraenergy.com>, and <semprafacilities.com>.
In response to each of the requirements under the Policy, the Complainant asserts as follows:
(i) The Domain Name is confusingly similar to the Complainant’s trade mark
The Complainant submits that the Respondent is exploiting the substantial goodwill that Complainant has built in its trade marks by using an email address connected to the Domain Name in order to intercept communications between the Complainant and the Complainant’s vendor to fraudulently induce the latter to wire payment to a bank account which is not associated with Complainant. According to the Complainant, the fact that Respondent wholly incorporated SEMPRA trade marks in the Domain Name, and maintained the SEMPRA trade marks in the email signature block associated with the Domain Name, is likely to cause the average Internet user, or recipient of an email from an associated email address of the Domain Name to assume, wrongly, that the Respondent is affiliated with, sponsored by, or otherwise related to the Complainant.
The Complainant states that since the Domain Name incorporates the Complainant’s mark in its entirety, the misspelling of the descriptive term “utilities” fails to add adequately distinguishing indicia and actually increases the likelihood of confusion considering the descriptiveness of “utilities” in connection with the Complainant’s services. The Complainant submits that this is further supported by the presence of proven confusion as the Complainant's vendor actually believed that the emails it received which were associated with the Domain Name were affiliated with, sponsored, or approved by the Complainant.
(ii) The Respondent has no rights or legitimate interests in the Domain Name
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant claims that it has established a prima facie case, sufficient to shift the evidentiary burden to the Respondent.
Furthermore, the Complainant submits that the Respondent cannot overcome its evidentiary burden to show any legitimate rights in respect of the Domain Name as (i) the Respondent's use of the Domain Name is not in connection with bona fide offering of goods or services; (ii) the Respondent is not commonly known by the Domain Name and (iii) the Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
(iii) The Domain Name was registered and is being used in bad faith
The Complainant argues that considering the facts and circumstances of the instant case, bad faith and intent can clearly be inferred in light of the actions taken by the Respondent when registering the Domain Name.
Furthermore, according to the Complainant, the Respondent’s bad faith in use of the Domain Name is clearly demonstrated as the Respondent used the email addresses associated with the Domain Name to intercept communications between the Complainant and its vendor, and to fraudulently induce payment of funds to the Respondent’s bank account when it was intended for Complainant’s. As evidence, the Complainant has submitted copies of said emails.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove the following three elements:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the 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.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality, and weight of the evidence.
In addition, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent did not reply to the Complainant’s contentions. The Respondent’s failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the aforementioned provisions into consideration, the Panel finds as follows:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided evidence that it has registered trade mark rights in the term SEMPRA in connection with energy utilities. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark. In this regard, the Panel notes that the Domain Name incorporates the Complainant's distinctive SEMPRA trade mark in its entirety with the addition of the descriptive misspelt term “utilitie” (without the last “s” in “utilities”). The Panel finds that this addition is insufficient to avoid the confusing similarity with the Complainant’s trade mark. See section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”.
Furthermore, it is widely accepted that the “.com” gTLD is generally irrelevant for the purpose of assessing identity or confusing similarity between a trade mark and a domain name.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trade mark.
The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Domain Name. Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including but not limited to:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
A complainant is required to make a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name in question. If, however, the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See section 2.1 of the WIPO Overview 3.0.
The Complainant has asserted that the Respondent is not affiliated or connected in any way with the Complainant and nor has it been authorised by the Complainant to make any use of its SEMPRA trade mark. There is no evidence that the Respondent is commonly known by the Domain Name, in accordance with paragraph 4(c)(ii) of the Policy.
The Respondent’s use of the Domain Name to send and intercept emails between employees of the Complainant and its vendor with the ultimate goal of diverting the wiring of funds owed by Complainant's vendor to Complainant to a bank account associated with Respondent, is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name, in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy, as the Respondent is using the Domain Name, which consists of the Complainant's trade mark in its entirety with the addition of the misspelt term related to Complainant's field of business, to fraudulently misrepresent itself as the Complainant in order to unduly take advantage of the Complainant’s rights.
The Complainant has therefore made a prima facie case of the Respondent’s lack of rights or legitimate interests in the Domain Name. As a result of its default, the Respondent has failed to rebut such a showing.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to demonstrate that the Domain Name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:
“(i) circumstances indicating that you 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 trade mark 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 trade mark 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 website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that the Domain Name was registered in bad faith. The Complainant’s SEMPRA trade mark not only significantly predates the registration date of the Domain Name, but also enjoys considerable renown worldwide in connection with energy utilities, as shown by the evidence put forward by the Complainant. Furthermore, the Domain Name consists of an intentional misspelling of the term related to Complainant’s field of business, moreover, almost identically mirrors the Complainant’s domain name <semprautilities.com> (registered on March 12, 2002). Prior panels deciding under the Policy have held that “typosquatting is inherently parasitic and of itself evidence of bad faith”. See National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011. Indeed, given the Complainant’s renown worldwide and the nature of the Domain Name itself, it is clear that the Respondent had knowledge of the Complainant’s rights at the time of registration of the Domain Name and that it deliberately registered it to take advantage of such rights.
The Respondent is using the Domain Name, which consists of the Complainant's trade mark in its entirety with the addition of the misspelt descriptive term, to send emails misrepresenting itself as the Complainant. Whilst none of the circumstances set out in paragraph 4(b) of the Policy, as outlined above, perfectly describe the Respondent’s conduct, this list is not exhaustive and so the Panel is free to consider other circumstances for the purposes of determining bad faith use. The Panel therefore finds that the Respondent’s use of the Domain Name for email purposes to fraudulently misrepresent itself as the Complainant is in bad faith.
Finally, the Panel also finds that the Respondent’s failure to take part in the present proceedings constitutes an additional indication of its bad faith.
The Complainant has therefore satisfied paragraph 4(a)(iii) 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 <semprautilitie.com> be transferred to the Complainant.
Date: June 19, 2018