WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Pepco Holdings, Inc. v. Private Registrations Aktien Gesellschaft Case No. D2009-1336 1. The Parties
The Complainant is Pepco Holdings, Inc. of Washington, United States of America represented by Venable, LLP of Washington, United States of America (“US”).
The Respondent is Private Registrations Aktien Gesellschaft CNR of Kingstown, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2009. On October 9, 2009, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On October 9, 2009, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 October 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 6, 2009.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on November 12, 2009. 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, which does and has done business as Pepco through its subsidiary, Potomac Elecrtric Power Company, is the regulated utility that provides electric power to Washington D.C. and Maryland suburbs, serving over 700,000 customers. Complainant also owns and operates an affiliate, Pepco Energy Services which provides competitive energy products and services.
Complainant owns numerous trademark registrations for the marks PEPCO and PEPCO ENERGY SERVICES.
Complainant's U.S. registration no. 934606 for the mark PEPCO was registered on May 23, 1972 and claims, as a first use in commerce date, January 1, 1907.
The Domain Name currently resolves to a website containing a number of (presumably) pay-per-click links to websites offering products and services related to: Electricity Prices, Green Energy, Thermal Energy, Alternative Fuel i.e. related to the same field as the Complainant.
The Domain Name was first registered by the Complainant on April 9, 1996 and subsequently re-registered by Respondent or its predecessor some time after Complainant's registration lapsed. 5. Parties' Contentions A. Complainant
Complainant claims that:
The Domain Name is confusingly similar to the aforementioned Complainant's trademarks, PEPCO and PEPCO ENERGY SERVICES, and company names, Pepco Holdings Inc. and Pepco Energy Services;
Respondent has no rights or legitimate interests in respect of the Domain Name;
Before the dispute, Respondent had not been using the Domain Name in connection with a bona fide offering of goods and services;
The Domain Name resolves to a website containing advertisements about energy service companies as well as pay-per-click links to websites featuring information about energy service companies. Complainant points out that on this page there is more than just AdSense and pay-per-click links, evidencing that it has text which does not appear to be auto-generated, or based on Complainant's own strategy.
Complainant has not authorized Respondent to use the PEPCO trademark;
The fact that Complainant was the original registrant and user of the Domain Name further confirms the bad faith of Respondent;
PEPCO is a unique and well-known trademark. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy lists three elements that Complainant must prove to merit a finding that the Domain Name registered by Respondent be transferred to Complainant:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has established that it has rights in the trademarks PEPCO and PEPCO ENERGY SERVICES in connection with energy products and services. The Panel notes that the addition of a generic term, i.e. “services”, to the trademark PEPCO is not sufficient to avoid confusion. As has often been held by previous decisions, a domain name which includes either whole or partially, a Complainant's registered trademark is typically /considered to be confusingly similar to it. See CHANEL, INC. v. ESTCO TECHNOLOGY GROUP, WIPO Case No. D2000-0413 and Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022.
Therefore, this Panel finds the Domain Name is confusingly similar to a trademark in which Complainant has rights. B. Rights or Legitimate Interests
Complainant must show that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant may do so e.g., by establishing a prima facie case that Respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.1. Respondent in this UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in the Domain Name e.g., by demonstrating in accordance with paragraph 4(c) of the Policy:
(i) that before any notice to Respondent of the dispute, it used or made 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) that Respondent is commonly known by the Domain Name, even if it has not acquired any trademark or service mark rights; or
(iii) that Respondent is 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.
Respondent has no connection or affiliation with Complainant, who has not licensed or otherwise authorized Respondent to use Complainant's trademark. Respondent has not alleged any facts or elements to justify rights and/or legitimate interests in the disputed Domain Name. Respondent does not appear to make any legitimate use of the Domain Name for noncommercial or otherwise fair use related activities. On the contrary, it appears that Respondent is using it to direct consumers to websites that offer services in competition with those offered by Complainant.
Therefore, the Panel considers that there is no evidence that Respondent has done anything that could be regarded as giving rise to a right or legitimate interest under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on the holder's website or location.
Accordingly, for Complainant to succeed, the Panel must be satisfied that the Domain Name has been registered and is being used in bad faith.
Considering the notoriety, the age and the use on the Internet of Complainant's trademarks and in the absence of contrary evidence, the Panel finds that there are good reasons to believe that Respondent had actual knowledge of Complainant's trademark when it registered the Domain Name. In this regard the Panel finds it important to note that Complainant originally registered and used the Domain Name for years, before it lapsed (for reasons that are not detailed in the Complaint but that are not relevant for deciding the case).
Furthermore, it appears that Respondent's website consists not only of auto generated pay-per-click links but also of contents allegedly chosen by Respondent, contents that can be deemed to be promoting products and services competing with those of Complainant. This is also an inference of Respondent's knowledge of Complainant's trademarks and activity at the time it applied for the Domain Name. In WIPO Case D2004-1110 (Credit Industriel et Commercial S.A., Banque Scalbert Dupont S.A. v. La Porte Holdings, Inc.,) was affirmed “It is obvious, mainly from the categories of hyperlinks used by the Respondent on the litigious websites (banking and financial), that the latter was well aware of both Complainant's identity and activities.”
The Panel, in accordance with previous decisions issued under the Policy, is of the opinion that actual knowledge of a complainant's trademark and activities at the time of the registration of a disputed domain name may be considered in formulating an inference of bad faith (see Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409, “It is inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the complainant. The respondent was not authorised by the complainant to use its mark nor any of the disputed domain names”).
Moreover, as regards Respondent's use of the Domain Name, it appears that Respondent's website is used for commercial ads and sponsored links redirecting also to websites of competitors of Complainant. By so deflecting Internet users, Respondent has shown bad faith registration and use of the Domain Name that clearly falls within the example given in paragraph 4(b)(iv) of the Policy.
In addition, it is the Panel's opinion that not replying in any way to the warning letter of Complainant's representative is further inference of bad faith. In this sense see Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330 (failure to positively respond to a complainant's efforts to make contact provides strong support for a determination of bad faith); see also RRI Financial, Inc., v. Ray Chen,WIPO Case No. D2001-1242 (finding bad faith where respondent refused to voluntarily transfer the domain name and failed to respond to demands by complainant.)
Finally, Respondent has not denied Complainant's assertions of bad faith, has not given
any justification for the registration of the Domain Name or substantiated or at least alleged any concurrent right or legitimate interest to the Domain Name which could give rise to good faith registration and use of the Domain Name.
Considering the foregoing, the Panel concludes that Respondent registered and is using the Domain Name in bad faith and that the requirements of paragraph 4(a)(iii) of the Policy are satisfied. 7. Decision
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 Name be transferred to Complainant.
Fabrizio Bedarida
Sole Panelist
Dated: November 25, 2009
Full & Egal Universal Law Academy