Complainant is Sempra Energy Corporation of San Diego, California, United States of America, represented by Sideman & Bancroft LLP, United States of America (“United States” or “U.S.”).
Respondent is John Griffith, Sempra Energy of San Diego, California, United States, self-represented. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 15, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2017. The Response was filed with the Center on December 11, 2017.
The Center appointed Richard W. Page as the sole panelist in this matter on December 19, 2017. 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
Complainant is the exclusive owner of a global portfolio of trademarks for the word “sempra”, used worldwide in connection with Complainant’s services. Complainant’s business consists primarily of the development and operation of energy infrastructure projects, the operation of energy utilities, and the provision of related products directly to energy consumers. Through the management and operation of local subsidiaries, Complainant develops and maintains energy infrastructure assets throughout North and South America.
Since the creation of Sempra in 1998 via the merger of Pacific Enterprises and Enova Corporation, the word “sempra” has been consistently used and prominently displayed directly in connection with Complainant’s services and with all promotional advertising and marketing materials distributed by Complainant. The Complainant’s trademark registrations include SEMPRA, registered in the European Union on August 22, 2003 with trademark registration number 2418911; SEMPRA ENGERGY, registered in the European Union on March 18, 2003 with trademark registration number 2418952 and SEMPRA ENERGY UTILITIES, registered in the United States on July 19, 2005 with trademark registration number 2973640 and their associated design and stylized marks (the “SEMPRA Marks”), all of which are owned by Complainant.
Complainant owns a number of generic Top-Level Domains (“gTLDs”) which contain the SEMPRA Marks and were registered years prior to the date Respondent registered the Disputed Domain Name. These domains include, but are not limited to, (registered December 11, 1997), (registered June 27, 2004), (registered March 12, 2002), (registered June 28, 2016), (registered August 14, 2015), (registered June 28, 2016), and (registered November 4, 2014).
On or before September 21, 2017, an individual purportedly named Mr. Davis emailed and set a meeting with a representative of Complainant’s mobile telephone and mobility service provider, Verizon Enterprise Solutions (“Verizon”). Mr. Davis sent this email from an email address connected to the disputed domain name. The signature block to Mr. Davis’ email address contained the SEMPRA ENERGY FOR EVERY DAY LIFE Trademark (U.S. Reg. Nos. 3966732, registered on May 24, 2011 and 3971007, registered on May 31, 2011), identified Mr. Davis as the “President of Utilities,” and listed Complainant’s current business address, telephone and fax numbers.
On September 21, 2017, Mr. Davis described to the above-mentioned representative that he was seeking to “migrate our employees from BYOP mobile plans to company owned devices” and requested that he be connected with someone in the mobility division. Mr. Davis was referred to the Verizon Wireless Client Partner who supports Complainant with their wireless needs. Mr. Davis was offered assistance regarding his request and was offered to meet in person. Mr. Davis responded with a request for seventeen new lines of service as part of a “pilot” program and requested quotes for a specific service level and promotions for Apple mobile devices. Mr. Davis also conveyed that he was “super busy on site with a large client into the middle of Oct,” suggesting that he would be unable to meet in person.
Between September 17, 2017 and September 25, 2017, the above service providers became suspicious of Mr. Davis’ email address (“[…]@”) and notified Complainant’s Cyber Security division. On September 25, 2017, Complainant’s Web Technical Advisor in charge of Complainant’s domain portfolio, notified a staff attorney of Complainant, that the Disputed Domain Name was registered by an unknown third party and that he attempted to impersonate a Sempra employee and obtain products from Verizon.
On October 24, 2017, a member of Complainant’s Cyber Security Incident Response Team, provided an analysis and comparison of the WhoIs record of the Disputed Domain Name versus a genuinely owned domain owned by Complainant. It was noted that the Disputed Domain Name used (i) the physical address of Complainant’s former corporate headquarters, (ii) the name and contact information of an actual employee of Complainant as the Disputed Domain Name’s Tech Contact, and (iii) different email addresses and DNS servers not owned and operated by Complainant.
On or before October 31, 2017, using the same email address described above, Mr. Davis emailed another third-party service provider of Complainant, inquiring about a purchase of chemicals. On October 31, 2017, this service provider responded to Mr. Davis requesting a discussion of the inquiry via phone. Mr. Davis replied on November 9, 2017 indicating that he was “really swamped” and wanted to communicate via email initially. Mr. Davis also requested standard pricing and a catalogue. On November 9, 2017, the service provider became suspicious of Mr. Davis and emailed Complainant a copy of the email communication with Mr. Davis.
As of the date of the Complaint, the Disputed Domain Name redirects to the Complainant’s corporate website, .
The Disputed Domain Name was registered on August 14, 2017. 5. Parties’ Contentions A. Complainant
Complainant contends that it has developed a strong name and reputation within the industry among members of the consuming public as a leading developer of energy infrastructure and utility operations. Complainant further contends that it has invested substantial effort and resources to develop and promote public recognition of the word “sempra,” the Sempra brand and of the family of Sempra owned trademarks.
Complainant further contends that the SEMPRA Marks are well known in the energy infrastructure and utility operations industry.
The United States trademark registrations for the SEMPRA Marks (Nos. 3874530, 3874531 and 3411029) have become uncontestable. Complainant further contends that, as a result of extensive marketing and promotion, the SEMPRA Marks are strong and distinctive indicators of the source of Complainant’s goods and services.
Complainant alleges that Respondent registered the Disputed Domain Name to Complainant’s former corporate address and with an email address which is not associated with Complainant.
Complainant alleges that Respondent registered the Disputed Domain Name, which is identical to the SEMPRA Marks owned by Complainant in multiple jurisdictions. Complainant further alleges that Respondent is exploiting the substantial goodwill which Complainant has built in its SEMPRA Marks by registering the Disputed Domain Name, using an email address with the Disputed Domain Name to communicate with its service providers for commercial gain, and using the SEMPRA Marks in the signature block of such email communications. Complainant further alleges that it has not authorized Respondent’s use of the SEMPRA Marks and Respondent cannot demonstrate a legitimate right or interest in the Disputed Domain Name. Respondent’s use of the Disputed Domain Name and associated email address improperly creates the impression that Respondent’s Disputed Domain Name is owned and used by a party that is affiliated with, sponsored, or approved by Complainant, all to Complainant’s irreparable damage.
Complainant avers that the fact that Respondent wholly incorporates the SEMPRA Marks in the Disputed Domain Name and the fact that the Disputed Domain Name redirects to Complainant’s corporate website, is likely to cause the average Internet user, or recipient of an email from an associated email address of the Disputed Domain Name to assume, wrongly, that Respondent is affiliated with, sponsored by or otherwise related to Complainant. Complainant further avers that the likelihood of confusion is even stronger given the use of the descriptive term “utilities” in the Disputed Domain Name which is a term generally related to Complainant’s core business offerings.
Complainant argues that it may establish the lack of rights and legitimate interests by making out a prima facie case against Respondent, thereby shifting the burden to Respondent to demonstrate its rights or legitimate interests in the Disputed Domain Name. Here, Complainant asserts that its prima facie case is established by the following the incontrovertible facts: (i) the SEMPRA Marks’ registrations are evidence of Complainant’s exclusive right to use the SEMPRA Marks; (ii) Respondent has registered the identical and therefore confusingly similar Disputed Domain Name which incorporates the dominant element “sempra” in each of the SEMPRA Marks in its entirety with no distinguishing additions; (iii) Respondent set up the Disputed Domain Name to redirect to Complainant’s corporate website and to send emails for commercial gain to its service providers; and (iv) Complainant has not granted Respondent a license or any other authorization to use the SEMPRA Marks as part of the Disputed Domain Name or otherwise.
Complainant alleges that Respondent cannot establish a bona fide sale of goods and services when Respondent is knowingly infringing the SEMPRA Marks. Complainant further alleges that Respondent is not commonly known by the Disputed Domain Name. Here the record shows that (a) the only place in which Respondent refers to itself as “@” is in the identification of the email address of Mr. Davis, and (b) there is no other publicly identifiable use of the Disputed Domain Name by Respondent, as the Disputed Domain Name redirects to Complainant’s website.
Complainant further alleges that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers to tarnish the SEMPRA Marks. Complainant further alleges that using the Disputed Domain Name in connection with a fraudulent “phishing” scheme to defraud third parties is not a legitimate noncommercial use.
Complainant argues that registration of a well-known trademark as a domain name is an indication of bad faith in itself, even without considering other elements. Complainant posits that its worldwide reputation and presence on the Internet, indicates that Respondent was or should have been aware of the SEMPRA Marks prior to registering the Disputed Domain Name.
Complainant further alleges that Respondent’s only use of the Disputed Domain Name is to redirect the Disputed Domain Name to Complainant’s corporate website and use with Respondent’s email address. Respondent is making no other positive use of the Disputed Domain Name, and there is no publicly available evidence of advertising, promotion or display to the public of the Dispute Domain Name.
Complainant contends that using the Disputed Domain Name as part of a fraudulent “phishing” scheme constitutes bad faith under the Policy. See, DeLaval Holding AB v. Registration Private, Domains By Proxy LLL/Craig Kennedy,WIPO Case No. D2015-2135; Sygenta Particpations AG. V. Guillaume Texier, Gobain Ltd.,WIPO Case No. D2017-1147. B. Respondent
The Response states simply that “WE BELIEVE THE DOMAIN WAS USED LEGITMATELY FOR OUR OWN PURPOSES.” The Response then adds “The Respondent consents to the remedy requested by the Complainant and agrees to the disputed domain names(s).” 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 in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
The Panel is uncertain from the Response whether Respondent intends to contest the allegations of the Complaint. Therefore, the Panel hereby reviews each of the elements which Complainant is required to prove.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the SEMPRA Marks in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant contends that it has numerous registrations of the SEMPRA Marks and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the SEMPRA Marks. Complainant further alleges that certain of its registrations are incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the SEMPRA Marks in connection with the stated goods and services.
Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
The Panel finds that Complainant has set forth a prima facie case of its rights in the SEMPRA Marks and that Respondent has failed to refute this prima facie case.
Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the SEMPRA Marks pursuant to paragraph 4(a)(i) of the Policy.
Numerous UDRP decisions have recognized that incorporating a trademark or its significant element in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. Complainant argues that the entirety of the principal element “sempra” is incorporated into the Disputed Domain Name. Complainant further argues that when given that the Disputed Domain Name incorporates “Sempra” with only the addition of the descriptive word “utilities,” it is still confusingly similar to the SEMPRA Marks as the addition of descriptive terms does not eliminate the likelihood of confusion. See, Hoffmann-LaRoche AG v. P Martin,WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah,WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign,WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,WIPO Case No. D2008-0792.
The Panel notes that the entirety of the principal element of the SEMPRA Marks is in the Disputed Domain Name. The addition of the term “utilities” in the Disputed Domain Name does not affect a finding that the Disputed Domain Name is identical or confusingly similar to Complainant’s registered trademark.
Therefore, the Panel concludes that Complainant has established the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 [SEMPRA Marks] at issue.
Complainant alleges that Respondent cannot establish a bona fide sale of goods and services when Respondent is knowingly infringing the SEMPRA Marks. Complainant further alleges that Respondent is not commonly known by the Disputed Domain Name. Here the record shows that (a) the only place in which Respondent refers to itself as “@” is in the identification of the email address of Mr. Davis, and (b) there is no other publicly identifiable use of the Disputed Domain Name by Respondent, as the Disputed Domain Name redirects to Complainant’s website.
Complainant further alleges that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers to tarnish the SEMPRA Marks. Complainant further alleges that using the Disputed Domain Name in connection with a fraudulent “phishing” scheme to defraud third parties is not a legitimate noncommercial use.
The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interest in the Disputed Domain Name.
Respondent’s response is that ““WE BELIEVE THE DOMAIN WAS USED LEGITMATELY FOR OUR OWN PURPOSES.”
The Panel finds that the response is insufficient to rebut the prima facie case established by Complainant.
Therefore, the Panel concludes that Complainant has made the required showing under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and uses the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you have 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 [SEMPRA Marks] 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 [Respondent] have registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [Respondents] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark [SEMPRA Marks] as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.
Complainant argues registration of a well-known trademark as a domain name is an indication of bad faith in itself, even without considering other elements. Complainant posits that its worldwide reputation and presence on the Internet, indicates that Respondent was or should have been aware of the SEMPRA Marks prior to registering the Disputed Domain Name.
Complainant alleges that Respondent has been using the Disputed Domain Name to attract Internet users to Complainant’s website, thereby creating false credibility for Respondent’s misleading Disputed Domain Name. Paragraph 4(b)(iv) of the Policy describes redirection to Respondent’s website or “other on-line location.” Here the other on-line location is Complainant’s own website.
Complainant further alleges that Respondent’s only use of the Disputed Domain Name is to redirect the Disputed Domain Name to Complainant’s corporate website and use with Respondent’s email address. Respondent is making no other positive use of the Disputed Domain Name, and there is no publicly available evidence of advertising, promotion or display to the public of the Dispute Domain Name.
Complainant contends that using the Disputed Domain Name as part of a fraudulent “phishing” scheme constitutes bad faith under the Policy. See, DeLaval Holding AB v. Registration Private, Domains By Proxy LLL/Craig Kennedy, supra; Sygenta Particpations AG. V. Guillaume Texier, Gobain Ltd., supra.
The Panel finds that such activity demonstrates the necessary elements of paragraphs 4(b)(iii) and (iv) of the Policy. In addition, the Panel finds that the fraudulent “phishing” scheme employed by Respondent is an additional basis for finding bad faith.
Therefore, Complainant has satisfied the elements of paragraph 4(a)(iii) of the Policy. 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 Complainant.
Richard W. Page
Sole Panelist
Date: December 30, 2017
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