Complainant is Sempra Energy Corporation, United States of America (“United States” or “U.S.”), represented by Sideman & Bancroft LLP, United States.
Respondent is Lay Coon, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2020. On October 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 31, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Domain Name. 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 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 25, 2020. The Center appointed John C. McElwaine as the sole panelist in this matter on December 3, 2020. 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 an energy infrastructure company based in California. Complainant is the owner of the following United States trademark registration relevant to this proceeding: - SEMPRA ENERGY, U.S. Reg. No. 2438826, registered on March 27, 2001, in International Class 37; Collectively, these registrations are referred to as the “SEMPA ENERGY Mark.” On September 5, 2020, the Domain Name was registered with the Registrar. The Domain Name is used for email but does not resolve to a functioning website. 5. Parties’ Contentions A. Complainant Complainant contends that the Domain Name should be transferred because each of the three elements required in paragraph 4(a) of the Policy has been established. With respect to the first element of the Policy, Complainant contends that the Domain Name is confusingly similar to Complainant’s strong and well-known SEMPRA ENERGY Mark. Complainant points out that the Domain Name incorporates the entirety of Complainant’s SEMPRA ENERGY Mark, with SEMPRA positioned at the beginning of the Domain Name. Complainant further contends that the addition of the descriptive terms “energy” and “inc” do not lessen the likelihood of confusion. With respect to the second element of the Policy, Complainant alleges Respondent is not commonly known as Sempra Energy Inc. Instead, Complaint asserts that according to the Registrar’s records, Respondent’s name is Lay Coon. Complainant further claims that there is no relationship between Complainant and Respondent, and that Complainant has not licensed the SEMPRA ENERGY Mark to Respondent or authorized Respondent to register the Domain Name. Complainant provided evidence in the form of an email that Respondent has used the Domain Name to impersonate Complainant to defraud Complainant’s vendor partners and others, and asserts that this is not a legitimate use of the Domain Name. With respect to the third element of the Policy, Complainant alleges that unlawful use of a Domain Name is evidence of bad faith. Complainant claims that Respondent registered the Domain Name to impersonate Complainant for fraudulent purposes. As evidence, Complainant provided an email where Respondent held themselves out to be an employee of Complainant, using an email address associated with the Domain Name, despite no such individual being employed by Complainant, and claiming to represent a position with Complainant that does not exist. In the email, Respondent solicited quotes and submitted purchase orders, purportedly on Complainant’s behalf, using in the email Complainant’s name, logo, and address, and a telephone number with the same area code as phone numbers Complainant uses. Complainant contends, upon information and belief, that Respondent intended to purchase goods on credit without later compensating the vendors. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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. Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. On this point, Complainant has provided evidence that it is the owner of at least ten trademark registrations in the United States containing the words SEMPRA ENERGY or SEMPRA. It is well established that the addition of a generic or descriptive word to a trademark in a domain name does not avoid a finding of confusing similarity. See Mastercard International Incorporated v. Dolancer Outsourcing Inc.,WIPO Case No. D2012-0619; Air France v. Kitchkulture,WIPO Case No. D2002-0158; DHL Operations B.V. and DHL International GmbH v. Diversified Home Loans,WIPO Case No. D2010-0097. The Domain Name contains Complainant’s SEMPRA ENERGY trademark in its entirety, as the dominant element. The addition of the abbreviation “inc” does not serve to distinguish the Domain Name from the SEMPRA ENERGY Mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s SEMPRA ENERGY Mark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant needs to only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252. The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name: “(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.” Complainant contents there is no right or legitimate interest in holding a domain name for the purpose of furtherance of a fraud through impersonation. Complainant further contends that Respondent is not commonly known by the Domain Name, that Complainant has not licensed, authorized, or permitted Respondent to register the Domain Name, and that Respondent has not demonstrated any attempt to make legitimate use of the Domain Name. Respondent has not denied any of Complainant’s assertions and has not put forth any evidence showing that it has a right or legitimate interest in the Domain Name. The Panel observes that the Domain Name does not resolve to any active webpage, but rather has been used to send emails in an attempt to impersonate an employee of Complainant for fraudulent purposes. Moreover, the Panel finds that purpose of registering the Domain Name was to engage in an email scam or a phishing scheme, neither of which is a bona fide offering of goods or services. WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”); see also, CMA CGM v. Diana Smith,WIPO Case No. D2015-1774 (finding that the respondent had no rights or legitimate interests in the disputed domain name holding, “such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name”.) The undisputed evidence of impersonation, deception, and fraud nullifies any possible basis for the acquisition of rights or legitimate interests by Respondent. See Afton Chemical Corporation v. Meche Kings,WIPO Case No. D2019-1082. Accordingly, Complainant made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy. Here, Respondent registered the Domain Name to perpetrate an email scam or phishing scheme. Complainant’s core SEMPRA ENERGY Mark was intentionally chosen when the Domain Name was registered to pray on Complainant’s customers and vendors that received the fraudulent emails. In light of the email scam, there could be no other legitimate explanation except that Respondent intentionally registered the Domain Name to cloak its scam and deceive recipients into believing the emails were from Complainant. Such activity constitutes a disruption of Complainant’s business and also establishes bad faith registration and use. Securitas AB v. Whois Privacy Protection Service, Inc. / A. H.,WIPO Case No. D2013-0117 (finding bad faith based upon the similarity of the disputed domain name and the complainant’s mark, the fact that the complainant is a well-known global security company and the fact that the disputed domain name is being used to perpetrate an email scam.) In addition, the use of a deceptive domain name for an email scam has previously been found by UDRP panels to be sufficient to establish that a domain name has been registered and is being used in bad faith. See Samsung Electronics Co., Ltd. v. Albert Daniel Carter,WIPO Case No. D2010-1367; Securitas AB, supra,WIPO Case No. D2013-0117. The fact that the Domain Name was not used in connection with a competing website does not obviate a finding of bad faith. Section 3.3 of the WIPO Overview 3.0, instructs that UDRP panelists should examine the totality of the circumstances in each case and that the following factors that have been considered relevant in applying the passive holding doctrine: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” Id. Here, it appears Complainant’s SEMPRA ENERGY Mark is sufficiently distinctive and well known for the Respondent to invest the effort of running a fraudulent scheme. Complainant asserts that Respondent likely registered the Domain Name to send fraudulent email messages, including those that contain phishing attempts. Such activity would constitute a disruption of Complainant’s business and also establishes bad faith registration and use pursuant to paragraph 4(b)(iii) of the Policy. Securitas AB v. Whois Privacy Protection Service, Inc. / A. H., supra (Finding bad faith based upon the similarity of the disputed domain name and the complainant’s mark, the fact that the complainant is a well-known global security company and the fact that the disputed domain name is being used to perpetrate an email scam.) As discussed above, Respondent used Complainant’s name, logo, and address, and a telephone number with the same area code as phone numbers Complainant uses. In light of the actions undertaken by Respondent, it is inconceivable that Respondent coincidentally selected the Domain Name without any knowledge of Complainant. See e.g., Arkema France v. Steve Co., Stave Co Ltd.,WIPO Case No. D2017-1632. Moreover, in finding a domain name used only for an email scam was bad faith, the panel in Kramer Law Firm, P.A. Attorneys and Counselors at Law v. BOA Online, Mark Heuvel,WIPO Case No. D2016-0387, pointed out that numerous UDRP panels have found such impersonation to constitute bad faith, even if the relevant domain names are used only for email. See, e.g., Terex Corporation v. Williams Sid, Partners Associate,WIPO Case No. D2014-1742 (“Respondent was using the disputed domain name in conjunction with…an email address for sending scam invitations of employment with Complainant”); and Olayan Investments Company v. Anthono Maka, Alahaji, Koko, Direct investment future company, ofer bahar,WIPO Case No. D2011-0128 (“although the disputed domain names have not been used in connection with active web sites, they have been used in email addresses to send scam emails and to solicit a reply to an ‘online location’”). For this reason, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith. 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 Domain Name, John C McElwaine
- SEMPRA ENERGY, U.S. Reg. No 2441249, registered on April 3, 2001, in International Class 39
and 40;
- SEMPRA ENERGY, U.S. Reg. No 2437361, registered on March 20, 2001, in International Class 35
and 36;
- SEMPRA ENERGY, U.S. Reg. No 2457642, registered on June 5, 2001, in International Class 42;
- SEMPRA ENERGY UTILITIES, U.S. Reg. No, 2973640 registered on July 19, 2005, in International
Class 39;
- SEMPRA, U.S. Reg. No. 4350410, registered on June 11, 2013, in International Class 35;
- SEMPRA, U.S. Reg. No. 4338992, registered on May 21, 2013, in International Class 42;
- SEMPRA, U.S. Reg. No. 4342837, registered on May 28, 2013, in International Class 37;
- SEMPRA, U.S. Reg. No. 3874350, registered on November 9, 2010, in International Class 39; and
- SEMPRA, U.S. Reg. No 3874531, registered on November 9, 2010, in International Class 40.
Sole Panelist
Date: December 16, 2020
Full & Egal Universal Law Academy