WIPO Domain Name Decision D2000-1264 for pge-2000.com, pge-corporation.com, pge2000.com, pge2000.net, pgecorp.net, pgecorp2000.com, pgecorp2000.net, pgecorporation.com, pgecorporation.net, pgecorporation2000.com, pgecorporation2000.net

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

PG&E Corporation v. Samuel Anderson and PGE in the year 2000

Case No. D2000-1264

 

1. The Parties

The Complainant is PG&E Corporation, a corporation organized in the State of California, United States of America (USA), with place of business in San Francisco, California, USA.

The Respondents are Samuel Anderson and PGE in the year 2000, with address in Alameda, California, USA.

 

2. The Domain Names and Registrar

The disputed domain names are "PGE", "PGE", "PGE", "PGE", "PGEcorporation", "PGEcorporation", "PGEcorp", "PGEcorp", "PGE", "PGE-" and "PGE-".

The registrar of the disputed domain names is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) The Complainant initiated the proceeding by the filing of a complaint by e-mail received by the WIPO Arbitration and Mediation Center ("WIPO") on September 25, 2000, and by courier mail received by WIPO on September 27, 2000. Payment by Complainant of the requisite filing fees was made by electronic transfer. On September 28, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. (with the Registrar�s Response received by WIPO on October 1 and 2, 2000). On October 3, 2000, WIPO completed its formal filing compliance requirements checklist.

(b) On October 3, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondents via e-mail, telefax and courier mail.

(c) Respondents� response was received by WIPO via e-mail on October 24, 2000. On October 25, 2000, Respondent sent an e-mail message to WIPO requesting that the proceeding not be considered a default proceeding. WIPO replied by e-mail on October 25, 2000, indicating that since the response had been transmitted in a timely manner, the proceeding would not be considered a default proceeding.

(d) On November 10, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On November 13, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

(e) On November 13, 2000, Complainant and Respondents were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by November 27, 2000. On November 13, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

(f) In its response filed by e-mail on October 24, 2000, Respondents requested the opportunity to meet at WIPO headquarters in Geneva to "present you with our findings" apparently in relation to the general corporate conduct of Complainant. This request appeared intended to allow Respondent to demonstrate that the allegations that it makes about Complainant on its "www.pge" website are true.

The Panel has not received any additional requests from Complainant or Respondents regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

 

4. Factual Background

Complainant has registered the letter trademark and service mark "PG&E" on the Principal Register at the United States Patent and Trademark Office (USPTO), reg. no. 2,319,987, dated February 22, 2000. Such registration is in international class numbers 4, 9, 11, 16, 35, 36, 37, 39, 41 and 42, covering a broad range of goods and services, including energy commodities, computer programs, energy facilities, printed publications, business management and consulting services, risk management services, construction, utility services, educational services and industrial design for others. Such registration claims a date of first use for utility services of 1906, and of first use in commerce for utility services of April 1, 1928. Complainant has registered various additional marks on the Principal Register at the USPTO, including "PG and E Progress" (stylized word trademark), reg. no. 797,499, dated October 12, 1965 (covering monthly magazine); "PG and E" (stylized letter service mark), reg. no. 801,091, dated Dec. 28, 1965 (covering public utility services, as further specified); "PG and E" (stylized letter service mark), reg. no. 801, 107, dated December 28, 1965 (covering servicing and maintenance of natural gas and electrical distribution systems); "PG AND E WEEK" (word trademark), reg. no 931,154, dated March 21, 1972 (covering publication printed from time to time), "PG&E" (letter and design service mark), reg. no. 1,510,438, dated October 25, 1988 (covering public utility services, as further specified), and; "PG&E Your Energy Company" (word and design service mark), reg. no,. 2,059,450, dated May 6, 1997 (covering public utility services, as further specified). The foregoing registered trademarks and services marks are sometimes hereinafter referred to as the "PG&E marks". Complaint, paragraph 12 and Annex B.

Complainant makes extensive use of the PG&E marks in commerce. Complainant has registered the domain name "" and maintains an active website for its consumer business at Internet address "www.". The record for the "" domain name was created on March 7, 1991. Complainant has registered the domain name "" and maintains an active website regarding its corporate affairs at Internet address "www.". The record for the "" domain name was created on April 16, 1997.

According to the registrar�s verification response to WIPO, dated October 2, 2000, "PGE in the year 2000", with address at 2351 Southshore Center, Alameda, CA 94501, US, is the listed registrant of the domain names "pge" and "pge". According to a WHOIS database report, the Administrative Contact is "Cabeza Debaca, Patrick", with the same address, and telephone 510-523-5555 and telefax 510-523-5555. The records for the aforesaid registrations were created on August 26, 1999.

According to the registrar�s verification response to WIPO, dated October 2, 2000, "Samuel Anderson", with address at 1109 Park Avenue, Suite D, Alameda, CA 94501-5262, US, is the listed registrant of the domain names "PGE", "PGE", "PGEcorporation", "PGEcorporation", "PGEcorp", "PGEcorp", "PGE", "PGE-" and "PGE-". According to a WHOIS database report, the Administrative Contact is "Anderson, Samuel", with the same address, and telephone 510-523-5555. The records for the aforesaid registrations were created between February 29, 2000, and April 8, 2000.

Respondents maintain an active website at "www.pge". Posted on this website, in addition to expressive text described below, is the following:

"These Domains are for sale: Please contact us for details if interested PGE, PGE [,] PGE, PGE [,] PGEcorporation, PGEcorporation [,] PGEcorp, PGEcorp, PGE, PGE-C, PGE-"

The most prominent and lead text on Respondents� website, states:

"Welcome to the Website!........PGE ...We want to pay your next PG&E electric Bill....send Email to: Winner@PGE and keep hitting this site....If you are the lucky one, we will contact you and pay your bill....Two winners each month..."

The website also states:

"This site has been developed to keep the public informed on issues that involve the Utility Industry and how they run their corporations and lead you, the paying customer, to believe that they are who and what they say they are. You can say what we have uncovered, the utility company's are telling you one thing and leading you to believe another. There are several allegations that need to be addressed. More specifically, the current lawsuit against Pacific Gas & Electric and their on-site master vendor Corestaff.

PGE2000 would like to confront this and all information by letting people know the truth about just how Honest, Fair and Ethical the utility industry really is, especially Pacific Gas & Electric.

What we use in this website is evidence that we have been able to obtain from the Freedom of Information Act and through Public Records as well as anonymous reliable sources, you the public. So keep on visiting this site as often as you can to see for yourself just how honest the utilities really are.

Please forward this to friends, colleagues, associates, relatives and whoever else you can think of, because this involves them too. (Not just in the State of California.)

This site is not intended to be a vindictive site to abuse or discredit any company, corporation, person(s) or entity's, but only to point out the truth and have these company's come forth and do business according to their policies, procedures and our laws. We are using information that can be obtained through various sources that are open to the public. We start with Pacific Gas & Electric company for reasons of this company has continued to abuse their power and use whatever means possible to win any lawsuit or allegations against them, including breaking the law!

Disclaimer

For your information, the name PGE2000 stands for People Getting Ethical in the year 2000. This is in no way named after any company's, corporations or entities or implies any relation to any company, corporation or organization that might be mentioned on this site. We welcome these company's and organizations to give us any information that they may have to put on this web site for their defense. To date, CEO/President and Chairman of the Board Robert D. Glynn, jr. of Pacific Gas & Electric has ignored our requests to answer these allegations. All material is protected by the First Amendment of the Constitution of the United States. Let's get started!" (Panel visit of November 21, 2000, to "www.pge")"

According to a Network Solutions� WHOIS database report, "TekBrokers.Com, at the same address as Respondent Samuel Anderson, and with "Anderson, Samuelson" listed as Administrative Contact, is the registrant of "blueshield". The record of this registration was created on May 23, 1999. Complaint, paragraph 12, and Panel WHOIS search of November 21, 2000.

According to a Network Solutions� WHOIS database report, "Samuel Anderson", at the same address as Respondent Samuel Anderson, and with "Anderson, Samuelson" listed as Administrative Contact, is the registrant of "yahootaxi". The record of this registration was created on March 19, 2000, Complaint, paragraph 12, and Panel WHOIS search of November 21, 2000.

On July 14, 2000, Complainant (through its counsel) sent a cease and desist demand to Respondent Samuel Anderson via express delivery and e-mail. On August 24, 2000, Complainant (through its counsel) sent another cease and desist demand to Respondent Samuel Anderson and to Respondent/Administrative Contact Patrick Cabeza Debaca via express delivery and e-mail. The delivery via Federal Express to Patrick Cabeza Debaca was refused at the address on the record of registration of PG&E in the year 2000, because "no customer by that name there." Complaint, Annexes C, E & F.

On July 16, 2000, Respondent Samuel J. Anderson, with address as indicated on the record of registration for the disputed domain names other than "pge" and "pge", filed an application to register the service mark "pge" at the USPTO, in class 42, covering "consumer awareness group services, news, informational, internet broadcasting". This application has been assigned serial number 78-016,941. As of August 11, 2000, the application had not been assigned to an examiner. Complaint, Annex D.

The Service Agreement in effect between Respondents and Network Solutions subjects Respondents to Network Solutions� dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, paragraph 4(a)).

 

5. Parties� Contentions

A. Complainant

Complainant states in its own words:

"12. This Complaint is based on the following grounds:

"(a) PG&E, through its regulated utility subsidiary Pacific Gas and Electric Company (�PG&E�), has been in existence since 1905 and, together with its affiliates, has used its PG&E trademarks and service marks (�PG&E marks�) continually since at least as early as 1906. It first registered its marks in 1965, many of which are now incontestable under Section 15 of the Lanham Act. PG&E's U.S. Federal and California State registrations for its marks, as filed in the U.S. Patent and Trademark Office and Office of Secretary of State, respectively, are set forth below:

[see summary of trademark and service mark registrations, Factual Background, supra]

"(b) In addition to its eight registered marks, above, PG&E has used a number of other PG&E marks including, but not limited to, PG&E Corporation, long before Respondent registered his 11 domain names. Moreover, PG&E has filed the following Applications, which are currently pending before the U.S. Patent and Trademark Office: ****

"(c) Throughout North America, PG&E�s business covers the production, transmission, processing and distribution of natural gas and electricity, and the provision of energy related services, including the provision of natural gas and electric utility services to one in twenty Americans. Provision of these goods and services, amounted, for example, to operating revenues in 1999, of approximately $21 billion.

"(d) By virtue of PG&E's widespread use, promotion and recognition of the PG&E marks throughout North America, these marks have acquired a valuable commercial magnetism, to the extent that they are famous symbols representing PG&E, its affiliates, subsidiaries, and their services and products.

"(e) Although PG&E has marks for PG �&� E, it and its regulated utility subsidiary Pacific Gas and Electric Company also refer to themselves publicly as PGE. For example, since symbols such as ampersands may not be used in domain names, Pacific Gas and Electric Company's home Web page on the Internet, created on March 7, 1991, is found at �www..� PG&E's home Web page on the Internet, created on April 16, 1997, is found at �www..�

"(f) For approximately four months in 1998 and 1999, while Respondent was an employee of CORESTAFF Services, Inc. (�Corestaff�), Respondent was assigned by Corestaff to work at Pacific Gas and Electric Company. Corestaff is a provider of master staff augmentation services to Pacific Gas and Electric Company. After Respondent's employment was terminated by Corestaff, he filed suit in California State Court against various parties, including Pacific Gas and Electric Company, alleging, among other things, wrongful termination of employment.

"(g) On or about August 26, 1999, Respondent, with prior knowledge and constructive notice of PG&E's rights and federal and state registrations, registered the domain names �PGE� and �PGE.� [foonote omitted]

"(h) On or about February 29, 2000, Respondent, with prior knowledge and constructive notice of PG&E's rights and federal and state registrations, registered the domain names �PGECORPORATION.net� and �PGECORPORATION.com.�

"(i) On or about March 26, 2000, Respondent, with prior knowledge and constructive notice of PG&E's rights and federal and state registrations, registered the domain names �PGECORP,� �PGECORP,� �PGECORPORATION� and �PGECORP.net.�

"(j) On or about March 27, 2000, Respondent, with prior knowledge and constructive notice of PG&E's rights and federal and state registrations, registered the domain name �PGECORPORATION.�

"(k) Lastly, on or about April 8, 2000, Respondent, with prior knowledge and constructive notice of PG&E's rights and federal and state registrations, registered the domain names �PGE-CORPORATION.com� and �PGE-.�

"(l) Respondent is not affiliated with PG&E, its affiliates or subsidiaries, their services or products, nor is he licensed to use the PG&E marks.

"(m) On or about July 14, 2000, PG&E sent a cease and desist letter via Express Delivery and E-mail to Respondent advising him that PG&E is the owner of an entire family of PG&E word and design marks, many of the registrations for which are incontestable. (See July 14, 2000, letter attached hereto and incorporated herein by reference as Annex [hereto].) PG&E further informed Respondent that his use of the nine domain names �PGE,� �PGE,� �PGEcorporation,� �PGEcorporation,� �PGEcorp,� �PGEcorp,� �PGE,� �PGE-,� and �PGE-,� [footnote omitted] was likely to cause confusion among the public as it suggested a relationship between Respondent and PG&E that did not exist. PG&E demanded that Respondent discontinue his use of these domain names by July 31, 2000. PG&E received no response to its letter.

"(n) On or about July 16, 2000, two days after Respondent received PG&E's cease and desist letter of July 14, 2000, by E-mail, Respondent Samuel Anderson filed an application in the U.S. Patent and Trademark Office for the service mark �PGE.� (See copy of Thomson & Thomson Watch Notice, and copy of printout from the USPTO database, showing Respondent's application for a service mark for �PGE,� attached hereto and incorporated herein by reference as Annex [hereto].)

"(o) On or about August 11, 2000, PG&E discovered that the domain names �PGE� and �PGE� were registered to an entity entitled �PGE in the year 2000,� with �Patrick Cabeza Debaca� listed as its Administrative Contact.

"(p) On or about August 24, 2000, PG&E sent its second cease and desist letter to the attention of both Samuel Anderson and Patrick Cabeza Debaca regarding the nine domain names referenced in its first cease and desist letter, and the subsequently discovered �PGE� and �PGE domain names,� for a total of 11 domain names. (See August 24, 2000, letter, attached hereto and incorporated herein by reference as Annex [hereto].) In that letter, PG&E reiterated that use of the domain names in question was likely to cause confusion among the public as it suggested a relationship between the Respondents and PG&E that did not exist. PG&E also informed Respondents that filing a U.S. Patent and service mark Application for �PGE� two days after receipt of PG&E's first cease and desist letter was further evidence of their bad faith registration/use of the domain names. PG&E demanded that Respondents discontinue their use of the 11 domain names by September 5, 2000.

"(q) On or about August 25, 2000, Federal Express returned PG&E's second cease and desist letter addressed to Patrick Cabeza Debaca because �No customer by that name [was] there.� (See copy of returned Federal Express package attached hereto and incorporated herein by reference as Annex [hereto].)

"(r) To date, PG&E has received no response to its two cease and desist letters.

"(s) As set out below, �PGE in the year 2000� and Patrick Cabeza Debaca are but aliases for Respondent Samuel Anderson:

(1) �PGE in the year 2000� is an unknown and unregistered entity with the State of California Secretary of State, and Patrick Cabeza Debaca is an unknown person. (See two searches of the California Secretary of State database attached hereto and incorporated herein by reference as Annex [hereto], and Annex � above.) Moreover, �Cabeza Debaca� does not appear to be a legitimate surname, as literally translated from Spanish, it means �Cow head.�

(2) The Web site located at �PGE� lists all 11 of the domain names in question as being for sale at that address, without distinguishing ownership;

(3) Both Samuel Anderson and �PGE in the year 2000� have the same domain servers and telephone/fax numbers; and

(4) Although the domain name �PGE� is registered by �PGE in the year 2000� with Patrick Cabeza Debaca as its Administrative Contact, an application was filed with the U.S. Patent and Trademark Office to register the service mark �PGE� by Respondent Samuel Anderson, not �PGE in the year 2000� or Patrick Cabeza Debaca. (See Annex � above.)

"(t) Respondent's Domain Names Are, in Some Instances, Identical to PG&E's Marks; in All Instances They Are Confusingly Similar.

(1) Four of Respondent's domain names are identical to PG&E's marks, [footnote omitted] and seven of Respondent's domain names are confusingly similar to PG&E's marks since they incorporate PG&E's marks, corporate name and the numerals 2000. [footnote omitted] Even though the PG&E marks contain an ampersand and Respondent's domain names do not, and the PG&E marks do not contain a hyphen and one domain name does, these differences are miniscule, and cannot absolve Respondent's 11 domain name registrations of confusing similarity with the PG&E marks, especially since ampersand symbols are not permitted in domain names. (See, AT&T Corp. v. Tala Alamuddin (�ATT�) WIPO Decision No. D2000-0249 (respondent had no right to use the domain name since most persons in the United States could be confused that ATT was a millennium promotion by AT&T); Chernow Communications, Inc. v. Jonathan D. Kimball (��) WIPO Decision No. D2000-0119 (respondent's domain name was not distinguishable from complainant's mark since the use or absence of punctuation marks, including hyphens, does not alter the fact that a domain name is identical to a mark).)

(2) In Respondent's one active Web site, �PGE,� Respondent posts a disclaimer that PGE2000 stands for �People Getting Ethical in the year 2000,� and that the site �is in no way named after any company's [sic], corporations or entities or implies any relation to any company, corporation, or organization that might be mentioned on this site.� Respondent's weak attempt to conceal his true intention, which is to confuse Web users into accessing a site that appears to be owned and operated by PG&E, should be interpreted no differently than Tala Alamuddin's contention that ATT was a play on her first name in AT&T Corp. v. Tala Alamuddin, supra: �The submission that ATT somehow reflects her given name of Tala is pathetic.� Even if Respondent's disclaimer were legitimate, it does not resolve the confusing similarity between PG&E's marks and the 11 domain names registered and used by Respondent.

"(u) Respondent Has No Rights or Legitimate Interests in any of the 11 Domain Names Incorporating PG&E's Marks.

(1) Respondent is neither is affiliated with, nor has he been licensed or permitted to use, the PG&E marks or any domain names incorporating those marks. Accordingly, Respondent has no rights to or legitimate interests in any of the domain names in question. (See, Compagnie de Saint Gobain v. Com-Union Corp. (��) WIPO Decision No. D2000-0020 (respondent had no rights or legitimate interests in the domain name since it had not been licensed nor received permission to use any of complainant's trademarks or domain names incorporating those marks).)

(2) Only one of Respondent's 11 domain names, �PGE,� resolves to an active Web site. That site purports to offer �public service� information �on issues that involve the Utility Industry . . . .� In fact, it is a site containing many of the allegations in Respondent's California State Court action against Pacific Gas and Electric Company, among others, and appears intended to portray PG&E, Pacific Gas and Electric Company and its employees and officers in a truly negative manner. Pacific Gas and Electric Company has denied these allegations as false and without basis. Under the UDRP, a person is prohibited from using another's marks to misleadingly divert consumers, regardless of whether the intent is to inform or disparage. Where the intent is to disparage, the UDRP further precludes any acts intended to tarnish a complainant's reputation or mark. (Mission KwaSizabantu v. Benjamin Rost (��; .org; and .net) WIPO Decision No. D2000-0279 (respondent had no right to use the domain name since it was likely to confuse persons who would expect to access material from complainant, not respondent. Additionally, respondent's airing of critical views at a site identical to complainant's mark amounted to tarnishing the activities associated with complainant's mark, and divested respondent of any right or legitimate interest he may have had in the domain name.); E. & J. Gallo Winery v. Hanna Law Firm (�; net�), WIPO Decision No. D2000-0615 (respondent's conscious choice of two domain names virtually identical to complainant's mark to voice complaints was not justified by any legitimate considerations, but was to tarnish complainant's mark and to disrupt its business.); Hunton & Williams v. American Distribution Systems, Inc., et al. (��; ��), WIPO Decision No. D2000-0501 (disparaging content posted at site that is identical, or confusingly similar to complainant's mark is merely intended to tarnish complainant's mark.) Since there is nothing preventing Respondent from establishing a Web site to offer �public service� information at another address, there is no basis whatsoever, let alone a legitimate one, for Respondent to claim any rights to or interests in any of the 11 domain names.

(3) Respondent has posted a prominent announcement at �PGE� offering all 11 domain names, including �PGE,� the one that resolves to a �public service� site, for sale. At that site, a counter is also displayed. Counters are no more than a means to monitor the level of interest in the site to determine the value of the domain name. (See, Home Interiors & Gifts, Inc. v. Home Interiors (�,� and ��) WIPO Decision No. D2000-0010 (The counter established the number of visitors to the Web site to apparently demonstrate the value of the domain name to the complainant and others who might have interest in buying it.) If Respondent's true intent is to broadcast public service messages, he would not be offering his only active �public service � Web site's domain name for sale. (See, World Wrestling Federation Entertainment, Inc. v. Michael Bosman (��) WIPO Decision No. D99-0001 (respondent had no rights or legitimate interests in the domain name, as evidenced by his attempt to sell it only a few days after registering it.) Similarly, if Respondent's intent were legitimate, he would not have needed to register 11 domain names to broadcast one �public service� message, nor would he have offered all 11 domain names for sale.

(4) Additionally, as a former employee of Corestaff assigned to work at Pacific Gas and Electric Company, Respondent had prior knowledge and constructive notice of PG&E's rights and federal and state registrations. Not until after he had been assigned to work at Pacific Gas and Electric Company did he register his first domain names �PGE� and �PGE,� under the alias, �PGE in the year 2000,� aka Patrick Cabeza Debaca. Moreover, Respondent's later attempt to register his �PGE� domain name as a service mark was made only after PG&E sent him the first of two cease and desist letters.

(5) Lastly, Respondent is not, nor has he ever been known, by any of his 11 domain names herein. He did not register his first domain names, �PGE� and �PGE� until August 26, 1999.

"(v) Respondent's Actions, and the Circumstances Surrounding Them, Are Evidence of His Bad Faith Registration and Use of the 11 Domain Names Herein.

(1) There is ample evidence to support a finding of Respondent's bad faith in registering and using the 11 domain names incorporating PG&E's marks: a) Respondent registered the 11 domain names for the purpose of sale, as demonstrated by his overt offer to sell them as posted at the �PGE� Web site, and the placement of a counter at that site; b) Respondent's registration of not one but 11 domain names incorporating PG&E's marks is evidence of a pattern of registering domain names to prevent PG&E from obtaining domain names corresponding to its marks; c) Respondent's previous registration of domain names of other famous marks, including Yahoo (�YAHOOTAXICAB,� �YAHOOTAXI,� �YAHOOTAXICAB.com�) and Blue Shield (�BLUESHIELD�) is evidence of his ongoing pattern of registering domain names incorporating others' famous marks; d) Respondent provided false contact information, including a non-existent company name, �PGE in the year 2000,� and a non-existent contact name, �Patrick Cabeza Debaca�; e) Respondent has failed to establish a Web site or other on-line presence at 10 of the domain names in question, proving that Respondent's true intent was never to establish Web sites, but rather to sell them for valuable consideration in excess of his out-of-pocket costs; f) the content in Respondent's one active Web site, the domain name for which is also for sale, demonstrates that until sold, Respondent intended to disrupt PG&E's business and attract users to his site for his own commercial gain; and g) the content in Respondent's one active Web site demonstrates that Respondent's intent is also to tarnish PG&E's marks by posting false and misleading information concerning PG&E, Pacific Gas and Electric Company and its employees and officers. Any one of these facts alone would support a finding of bad faith here.

(2) In support of its argument regarding Respondent's bad faith, PG&E relies upon the following arbitration decisions: ISL Marketing AG, and the Federation Internationale de Football Association v. J.Y. Chung, W, W Co., and Worldcup 2002 (�w, net, org; , net; ; , net; ; , org, net; ; ; �) WIPO Decision No. D2000-0034 (Warehousing of 13 domain names using the words �world cup� is evidence of respondent's bad faith registration and use of those domain names); Telstra Corporation Limited v. Nuclear Marshmallows (��), WIPO Decision No. D2000-0003 (Circumstances indicating passive bad faith use included, among others: 1) complainant's strong and widely known trademark; 2) respondent's lack of evidence showing good faith use of the domain name; 3) respondent's active steps to conceal its true identity, by operating under a name that is not a registered business name; 4) respondent's provision and failure to correct false contact details; and 5) the lack of any plausible, legitimate, actual or contemplated active use of the domain name); Monty and Pat Roberts, Inc. v. Bill Keith (�; org�) WIPO Decision No. D2000-0299/0300 (respondent has the right to express its views on the Internet concerning the complainant; however, the right to express one's views is not the same as the right to use another's name to identify one's self as the source of those views); Compagnie de Saint Gobain v. Com-Union Corp. (��) WIPO Decision No. D2000-0020 (Bad faith use found where respondent knowingly chose a domain name consisting solely of complainant's trademark for a Web site that initially was devoted to opinions, concerns and criticism with respect to complainant's company. By choosing a domain name identical to complainant's marks, and by not choosing a domain name reflecting both the object and independent nature of its site, Respondent intentionally created a situation at odds with the legal rights and obligations of the parties); Cellular One Group v. Paul Brien (��) WIPO Decision No. D2000-28 (Bad faith use inferred from respondent's failure to establish a Web site for the domain and his failure to take any action with regard to the domain name except for its registration, since there was no feasible reason respondent would have registered the domain name in question but for his intent to sell it); Barney's Inc. v. BNY Bulletin Board (��), WIPO Decision No. D2000-0059 (respondent's actual or imputed knowledge of complainant's registered marks plus its willingness to accept consideration for transfer of the domain name amounted to use in bad faith); Mission KwaSizabantu v. Benjamin Rost (��; .org; and .net) WIPO Decision No. D2000-0279 (Bad faith use established since respondent could have made its publications in another manner without disrupting the activities of complainant); E. & J. Gallo Winery v. Hanna Law Firm (�; net�), WIPO Decision No. D2000-0615 (respondent's registration of two domain names virtually identical to complainant's mark to post complaints regarding complainant are likely to divert customers, disrupt business and tarnish complainant's mark, and are not consistent with a bona fide endeavor, but rather are consistent with an intent to dilute complainant's famous mark.); Hunton & Williams v. American Distribution Systems, Inc., et al. (��; ��), WIPO Decision No. D2000-0501 (respondent's primary purpose of harassing complainant, diverting its clients to websites that disparage and defame complainant, and interfering with complainant's business are all evidence of respondent's bad faith.); The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., (�,� etc.) WIPO Decision No. D2000-113 (Respondent's registration of 10 domain names using combinations of complainant's marks is a pattern and a calculated attempt to foreclose complainant's use of his own trademarks in cyberspace; moreover, the content at respondent's Web site calling and depicting complainant as an �industrial dinosaur� is trademark tarnishing for the purpose of disrupting complainant's business and a strong indication of bad faith.).)" Complaint.

Complainant requests that the Panel ask the registrar to transfer the domain names "PGE", "PGE", "PGE", "PGE", "PGEcorporation", "PGEcorporation", "PGEcorp", "PGEcorp", "PGE", "PGE-" and "PGE-"from Respondent to it (id., paragraph 13).

B. Respondent

Respondents� response is inter-lineated in a copy of Complainant�s complaint. Respondents contend:

1. That because it has applied for trademark registration for "PGE2000.COM" the Panel should terminate this proceeding, or at least suspend it pending the outcome of the trademark registration review process.

2. The Complainant has no rights in the PG&E marks.

3. Respondents� domain names are not confusingly similar to the PG&E marks.

4. That registration of any domain name is permitted, provided that it has not already been registered.

5. It is the right of every U.S. citizen to apply for trademark registration and await the outcome of USPTO review.

6. That Respondents have never received any correspondence from Complainant.

7. That Patick Cabeza Debaca is a real person.

8. That Complainant is in general a bad corporate actor that engages in false accusations, manipulation and intimidation, and that disseminating accurate information about Complainant over the Internet is Respondents� right protected by the First Amendment to the U.S. Constitution.

9. That Respondents have no connection with the registration of the domain names "blueshield" or "yahootaxi".

10. That Respondents have not attempted to sell the disputed domain names to Complainant.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion (Footnote 1). The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

In this proceeding, Respondent has furnished a detailed response to the complaint in a timely manner. Respondent received adequate notice of these proceedings.

As a threshold matter, the Panel determines that Samuel Anderson and PGE in the Year 2000 will be treated as a single Respondent for purposes of this proceeding. The two names, used in connection with registration of the disputed domain names, employ the same telephone number in Alameda, California. The disputed domain name, "pge", registered in the name of PGE in the Year 2000, has been the subject of an application for service mark registration submitted to the USPTO by Samuel Anderson. The "pge" website, which is the only active website identified by the disputed domain names, lists all of the disputed domain names for sale. Correspondence sent to the Adminsitrative Contact for PGE in the Year 2000 (Patrick Cabeza Debaca) was returned because there was no such person at the address provided. In light of the common registration information and pattern of conduct, the Panel will treat Samuel Anderson and PGE in the Year 2000 as a single Respondent.

Respondent�s request to convene a meeting with the Panel in Geneva was not accepted by the Panel. Whether or not Respondent could show that its allegations concerning the corporate conduct of Complainant are true is not material to the Panel�s determination, as set forth below.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent�s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Complainant is the holder of trademark and service mark registration for the term "PG&E" in the United States and is using that mark in commerce (see Factual Background, supra). Complainant�s registration of the "PG&E" mark on the Principal Register at the USPTO establishes a presumption of its validity in U.S. law (Footnote 2).

The Panel determines that Complainant has rights in the trademark and service mark "PG&E". Based on the date of first use in commerce of April 21, 1928 for utility services, and in light of complainant�s other PG&E marks registered in the 1960s, the Panel determines that Complainant�s rights in the "PG&E" mark arose prior to Respondent�s earliest registration, on August 26, 1999, of one of the disputed domain names ("pge").

Respondent has registered the domain names "PGE", "PGE", "PGE", "PGE", "PGEcorporation", "PGEcorporation", "PGEcorp", "PGEcorp", "PGE", "PGE-" and "PGE-". Each of these domain names (1) incorporates the letters "PGE", (2) adds a generic top-level domain name (gTLD) ".com" or ".net", (3) uses the letters "PGE" in lower case format while Complainant�s mark generally appears in an all-capital letter format, and (4) eliminates the ampersand ("&") between the "G" and "E". The domain names variously append "corp", "corporation" and/or "2000" to the end of Complainant�s mark, sometimes preceded by a hyphen.

The addition of the gTLDs ".com" and "net" are without legal significance from the standpoint of comparing the disputed domain names to "PG&E" since use of a gTLD is required of domain name registrants, ".com" and "net" are two of only several such gTLDs, and ".com" and "net" do not serve to identify a specific enterprise as a source of goods or services (Footnote 3). Insofar as domain names are not case sensitive, the Panel concludes that use of the lower case letter format in "pge"-formative domain names is without legal significance from the standpoint of comparing those names to "PG&E" (Footnote 4 ).

The ampersand may not be represented in domain names for technological reasons. Complainant itself has eliminated the ampersand in its own domain name registrations associated with the "PG&E" mark. Internet users are familiar with the fact that ampersands are not used in Internet addresses, and expect that a mark such as Complainant�s "PG&E" mark will be used without the ampersand in a domain name and web address. The elimination of the ampersand between the "G" and "E" does not serve to distinguish the disputed domain names from Complainant�s "PG&E" mark.

Respondent does not by adding the common descriptive or generic terms "corp", "corporation" and "2000" following "PGE", create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying mark held by Complainant. Similarly, the addition of a dash or hyphen (-) between terms does not create a new or different mark in which Respondent has rights or legitimate interests, nor does it alter the underlying mark held by Complainant.

The added terms "corp" and "corporation" commonly refer to a business entity. They are terms that users of the Internet would expect to be used by Complainant in connection with its mark. The term "2000" designates the current year, as well as the new millennium, and is also commonly associated with existing trademarks and service marks. These terms, when combined with Complainant�s mark, create domain names that Internet users are likely to assume are associated with Complainant as a source of goods or services on the Internet. As such, the disputed domain names "PGE", "PGE", "PGE", "PGE", "PGEcorporation", "PGEcorporation", "PGEcorp", "PGEcorp", "PGE", "PGE-" and "PGE-" are confusingly similar to Complainant�s mark within the meaning of paragraph 4(a)(i) of the Policy.

Complainant has met the burden of proving that Respondent is the registrant of domain names that are identical or confusingly similar to trademarks and service marks in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

The second element of a claim of abusive domain registration is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(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 trademark 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 trademark or service mark at issue." (Policy, paragraph 4(c)).

There is no evidence on the record of this proceeding that Respondent has used the disputed domain names in connection with a bona fide offering of goods or services.

Respondent asserts that "PGE2000" is intended to represent "People Getting Ethical in the Year 2000." However, Respondent has submitted no evidence that it used the name "People Getting Ethical in the Year 2000", or the abbreviation "PGE2000", prior to its registration of the disputed domain names. The Panel therefore does not consider Respondent to have established that it had been commonly known by the domain names prior to its registration of those names.

Respondent can be understood to be asserting that its submission of an application for registration of the service mark "PGE2000.COM" creates rights in that mark on its behalf, such that the Panel may not consider Complainant�s action alleging abusive domain name registration until such time as the USPTO finally acts on Respondent�s application. As this sole panelist has repeatedly noted, an application for trademark or service mark registration does not create a presumption of rights in favor of the applicant (Footnote 5). In U.S. law, an application for trademark or service mark registration on the Principal Register constitutes constructive use of a mark, contingent on subsequent registration (Footnote 6). It does not serve as a defense to trademark or service mark infringement. Respondent�s submission of an application for registration of the service mark "PGE2000.COM" does not establish rights or legitimate interests in the mark, or act as a bar to this proceeding.

Respondent also asserts a free speech interest in use of the "pge" domain name. However, Respondent�s actual use of this disputed domain name is inconsistent with establishing legitimate noncommercial or fair use under the Policy. Specifically, Respondent has used the website at "www.pge" to offer the "pge" domain name and the other disputed domain names for sale to the public. This constitutes commercial use of the "pge" domain name in an explicit sense.

Several U.S. federal courts have held that use of a registered trademark in a domain name to attract Internet users to a site critical of a trademark holder is not protected by a right of fair use when the critical website is used for commercial purposes because the competing trademark user is impermissibly taking advantage of the right holder�s interest in its mark (Footnote 7). In the instant case, Respondent is clearly attempting to take advantage of Complainant�s mark for purposes of commercial gain.

Respondent is free to use the Internet to express views critical of Respondent (bounded by libel laws and similar constraints). Respondent is not free to use Complainant�s mark to attract Internet users to its website where it offers domain names confusingly similar to Complainant�s registered marks for sale.

The Panel is making no judgment, express or implied, regarding the truth or falsity of Respondent�s allegations regarding Complainant as a corporate actor.

The Panel determines that Respondent has no rights or legitimate interests in the disputed domain names. Thus, the Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "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 [respondent�s] documented out-of-pocket costs directly related to the domain name" (Id., paragraph 4(b)(i)); (2) that a respondent has 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 [the respondent has] engaged in a pattern of such conduct" (id., paragraph 4(b)(ii)), and (3) that a respondent "by using the domain name, � [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent�s] web site or location of a product or service on [its] web site or location" (id., paragraph 4(b)(iv)).

Respondent has offered the disputed domain names for sale to the public on its website. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent.

In several earlier administrative proceedings conducted under the Policy, this sole panelist has determined that offers to sell to the public at large domain names that are identical or confusingly similar to marks of others may constitute bad faith within the meaning of paragraph 4(a)(iii) of the Policy (Footnote 8). This is based on the non-exhaustive character of the express list of bad faith factors in paragraph 4(b) of the Policy, and the lack of a justification for awarding financial gain to persons for the mere act of registration of the marks of others. In the instant proceeding, Respondent has sought to profit from the mere registration of Complainant�s mark as domain names (in combination with descriptive terms). The Panel determines such registration and use to be in bad faith.

The Panel need not determine whether Respondent also acted in bad faith in the sense of other provisions of the Policy.

Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

The Panel will therefore request the registrar to transfer the domain names "PGE", "PGE", "PGE", "PGE", "PGEcorporation", "PGEcorporation", "PGEcorp", "PGEcorp", "PGE", "PGE-" and "PGE-" to the Complainant.

 

7. Decision

Based on its finding that the Respondents, Samuel Anderson and PGE in the year 2000, have engaged in abusive registration of the domain names "PGE", "PGE", "PGE", "PGE", "PGEcorporation", "PGEcorporation", "PGEcorp", "PGEcorp", "PGE", "PGE-" and "PGE-" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names "PGE", "PGE", "PGE", "PGE", "PGEcorporation", "PGEcorporation", "PGEcorp", "PGEcorp", "PGE", "PGE-" and "PGE-" be transferred to the Complainant, PG&E Corporation.

 

 

 

 

Frederick M. Abbott
Sole Panelist

Dated: November 22, 2000

 

 

Footnotes:

1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.

2. 15 USCS � 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).

3. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). For purposes of its decision, the Panel need not address whether ".com" or ".net" may be capable of acquiring secondary meaning in another context.

4. See Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1055 (9th Cir. 1999).

5. See, e.g., Monty and Pat Roberts, Inc. v. J. Bartell, Case No. D2000-0300, decided June 13, 2000 and Marcario Casillas v. Maverick Group, Inc., Case No. D2000-0340, decided June 11, 2000.

6. 15 USCS � 1057(c).

7. See, e.g., Planned Parenthood Fed'n of Am. v. Bucci, 1997 U.S. Dist. LEXIS 3338 (S.D.N.Y. 1997) and Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998).

8. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000; General Electric Company v. Online S, Inc., Case No. D2000-0343, decided June 19, 2000; General Electric Company v. John Bakhit, Case No. D2000-0386, decided June 22, 2000, and; Wal-Mart Stores, Inc. v. Kenneth E. Crews, Case No. D2000-0580, decided August 30, 2000.

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