The Complainant is Southern California Gas Company of Los Angeles, United States of America, represented by Sideman & Bancroft LLP, United States of America.
The Respondent is Itzik Levi of Rishon Le Zion, Israel. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2012. On August 30, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2012, the Registrar 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 September 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2012.
The Center appointed David J.A. Cairns as the sole panelist in this matter on October 5, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a Californian public utility serving more than 20 million consumers.
The Complainant is the owner of the United States trademark registration No. 3,008,009 for the service mark SOCALGAS. The SOCALGAS mark was registered on October 18, 2005, and is based on a first use in commerce of January 1, 1996.
The Complainant markets itself through the domain name . The landing page of this website at this address states that the Complainant is “a Sempra Energy Utility”. Sempra Energy is in fact the registered owner of the domain name used by the Complainant, which was first registered on October 15, 1993. The Complainant uses this website to provide information about the company and its services as well as to enable customers to access individual account information. A website at this address was first created in December 1997.
The Respondent registered the disputed domain name on September 12, 2005.
The Panel entered the disputed domain name in its web browser on October 9, 2012. The landing page at this address had the following message: “Welcome to S. If you're looking for Bill Payment, Installation, Security System or anything similar, go ahead and browse our comprehensive resource directory. You ought to find something interesting!” Under the heading “Top Searches” on the landing page appeared subheadings of “Bill Payment”, “Payment Processing” and “Installation”. Under the heading “Most Preferred” appeared “Natural Gas Prices”, “Gas Generator” and “Security System”. There were also headings of “Recommended Listings” and “Popular Topics” with subheadings and links to gas and energy related topics, as well as on-line banking. The sub-headings led to “Sponsored Results” related to these topics, which in turn led to the websites of various retailers. The landing page also contained an advertisement for currency and commodity trading. 5. Parties’ Contentions A. Complainant
The Complainant states that it is the largest natural gas distribution utility in the United States. It submitted evidence that its SOCALGAS trademark has been in continuous use since January 1996 in its utility service and billings to millions of customers.
The Complainant states that the disputed domain name is identical to the Complainant’s registered trademark because the “.org” gTLD is irrelevant for the purpose of comparing the similarity of domain names. In addition, the Complainant states that the Respondent’s use of the SOCALGAS trademark in the disputed domain name causes a likelihood of confusion.
The Complainant acknowledges that the Respondent registered the disputed domain name before the registration of the Complainant’s SOCALGAS trademark, but states that the application for the registration of the trademark (which is publicly available through the USPTO website) was made before the registration of the disputed domain name. In any event, the Complainant has had common law rights in the SOCALGAS trademark since January 1996, which satisfies the requirements under the Policy. It states, referring to prior UDRP panel decisions, that UDRP panels have consistently held that common law trademarks satisfy the degree of trademark ownership required by the Policy.
The Complainant also states that the SOCALGAS trademark has been used in extensive advertising via its website. The website was launched and used in regular customer interaction before the Respondent registered the disputed domain name, creating secondary meaning in the SOCALGAS trademark. Further, the SOCALGAS trademark received significant media attention well before the service mark was registered.
The Complainant also states that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that the Respondent is not authorised to use the Complainant’s trademark in a domain name, or otherwise. Further, the Respondent is not using the disputed domain name for any bona fide offering of goods and services, and is making a commercial use of the disputed domain name. The Complainant states that the Respondent is using the website to generate revenue via a “pay-per-click” domain parking service, which is not a bona fide use of the disputed domain name as it is based on the trademark value of the domain name (referring to previous UDRP panel decisions).
The Complainant also states that the disputed domain name was registered and is being used in bad faith, through the unapproved use of the Complainant’s trademark, and also its “parking page” practices. In particular, the Complainant states that the Respondent’s use of the disputed domain name attempts to attract visitors for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to source, sponsorship, affiliation or endorsement of the Respondent’s website.
The Complainant states, citing prior UDRP panel decisions, that it is well established that use of a “parking page”, with links to unaffiliated or competing websites, is strong evidence of bad faith. The unauthorized use of the Complainant’s trademark to generate “pay-per-click” revenue or to seek competitive services constitutes bad faith under paragraphs 4(b)(iii) and (iv) of the Policy, and the fact that the webpage contains advertising links, from which the Respondent is likely to benefit through monetization programs, supports the inference that the purpose of the Respondent’s diversion of traffic from the Complainant’s own webpage is for the Respondent’s commercial gain.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel is required to decide the 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 appropriate.
The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns the United States registration referred to above for the SOCALGAS service mark. This service mark was registered shortly after the Respondent’s registration of the disputed domain name. However, the Panel is satisfied that the Complainant had common law rights in the SOCALGAS mark at the time of registration of the disputed domain name based on extensive and continuous use since 1996. In any event, “registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights” (see paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In determining whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark, the relevant comparison typically involves the second-level portion of the domain name only (here, “socalgas”). Clearly a trademark does not usually include a URL prefix (here, “www”), or a top-level domain name suffix (here, “.org”) that are functional elements of a domain name, and the comparison required for the first element of the Policy may exclude these elements. These elements are generally incapable of performing any distinctive function, and it is well-established that they may be ignored in making this determination (see Patricia Ann Romance Peterson, Romance Productions Ltd. v. Network Operations Center/Alberta Hot Rods,WIPO Case No. D2006-1431 (January 3, 2007), D. Ronaldo de Assis Moreira v. Eladio García Quintas,WIPO Case No. D2006-0524 (July 14, 2006) and LDLC.COM v. LaPorte Holdings, WIPO Case No. D2005-0687 (August 8, 2005)).
On this basis, the Panel finds that the disputed domain name is identical with the Complainant’s SOCALGAS trademark. Accordingly, the first element required by paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel notes the following circumstances in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (i) there is no evidence that the Respondent has any proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name; (ii) the Respondent is not authorized or licensed by the Complainant to use the SOCALGAS trademark or to register and use the disputed domain name; (iii) there is no evidence that the Respondent has been commonly known by the disputed domain name; (iv) the Respondent has been making a commercial use of the disputed domain name (through the appearance of advertisements and sponsored results on its website) so the circumstances described in paragraph 4(c)(iii) do not exist in the present case.
As regards paragraph 4(c)(i), the Panel finds that the Respondent has not used the disputed domain name in relation to a bona fide offering of goods or services. The Respondent has been using the disputed domain name to provide links (and to generate pay-per-click revenue) to the websites of diverse retailers. This is not a bona fide offering of goods or services because the Respondent is using the Complainant’s trademark to attract Internet users to its website, who are then offered the products and services of others (in other words, “bait and switch” marketing, which is not bona fide: see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Accordingly, and in the absence of any response from the Respondent providing any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Thus, the second element of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel notes that SOCALGAS is an invented work with no meaning in English. It is highly distinctive and has been extensively used by the Complainant in commerce. Many of the links on the Respondent’s website relate to natural gas, energy, and bill payment, which are topics that the Complainant addresses on-line with its customers at its website which incorporated its service mark. The use of an identical invented term as the second-level portion of the disputed domain name in these circumstances leads the Panel to conclude that the Respondent has registered and used the disputed domain name with full knowledge of the Complainant’s service mark and website. The Panel further concludes that the Respondent has registered and used the disputed domain name in order to deceive Internet users seeking the Complainant’s website, so as to generate revenue from advertisements and sponsored listings. This constitutes bad faith registration and use within the meaning of the Policy.
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.
In particular, Paragraph 4(b)(iv) states that if the Panel finds that the respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website 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 its website, it should be taken as evidence of the registration and use of the domain name in bad faith.
The evidence submitted by the Complainant supports a finding of bad faith under paragraph 4(b)(iv). The Respondent’s use of the disputed domain name with the intention to attract Internet users for commercial gain is established by the fact that the disputed domain name hosts a website containing advertisements and sponsored links. The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is identical to the SOCALGAS trademark, and the evidence of the substantial public recognition and goodwill associated with the SOCALGAS trademark.
Finally, given the distinctiveness of the SOCALGAS service mark and the fact that the disputed domain name is identical, it is not possible to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent that would not in all likelihood amount to be bad faith use within the meaning of the Policy because it would involve the intentional deception of Internet users (see Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131).
Accordingly, the third element of paragraph 4(a) of the Policy is also satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
David J.A. Cairns
Sole Panelist
Dated: October 15, 2012
Full & Egal Universal Law Academy