Southern California Edison Company v. CheapYellowPages.com / Brian Wick
Claim Number: FA1108001404438
Complainant is Southern California Edison Company (“Complainant”), represented by Richard Lyon of Holland & Knight LLP, California, USA. Respondent is CheapYellowPages.com / Brian Wick (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scedison.com>, registered with ENOM, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2011; the National Arbitration Forum received payment on August 23, 2011.
On August 23, 2011, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <scedison.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@scedison.com. Also on August 24, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on September 14, 2011. Respondent requested a three-member panel but did not provide the information required by ICANN Rule 3(b)(v) and did not provide payment for a three-member panel. Therefore, this case will proceed as a single-member panel case, as requested by Complainant.
An Additional Submission from the Complainant was received on September 16, 2011. This submission complied with Supplemental Rule 7.
An Additional Submission from the Respondent was received on September 19, 2011.
On September 21, 2011, pursuant to the Rules, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges that it is a corporation organized under the laws of the State of California and that it owns the registered trademarks SOUTHERN CALIFORNIA EDISON and SCE for utility services in the nature of transmitting, distributing and generating electricity. It is one of the largest electric utilities in the United States and has used its marks for over 100 years. The marks are also used for ancillary and related services. The marks are well-known. SCE is a widely-used and well-known abbreviation of the company’s name. The Complainant is also widely known as “Edison” in the western portion of the United States.
Complainant states that the disputed domain name includes both of Complainant’s marks, in particular the third word of the mark SOUTHERN CALIFORNIA EDISON. Specifically, Respondent uses SCE followed by EDISON. In joining the two terms together in the disputed domain name, Respondent omits only a single letter “e” to create an intentional misspelling. Respondent emphasizes SCE in its domain name by using the capitalized version “SCEdison” on his web site.
According to Complainant, a domain name which is clearly intended to be an abbreviation of, or a reference to, Complainant and is similar to the Complainant’s mark will be presumed by consumers to be affiliated with Complainant. Complainant cites UDRP precedents to support its allegation. Thus, the disputed domain name is confusingly similar to Complainant’s marks.
Complainant states that it has not authorized Respondent to use or register the disputed domain name and that there is no connection between Complainant and Respondent.
Complainant alleges that Respondent is not known by the disputed domain name or any name related to it. Respondent is doing business as “CheapYellowPages.com”. Respondent has no apparent connection to the terms SCE or EDISON.
According to Complainant, Respondent has made no legitimate commercial or non-commercial use of the disputed domain name. The disputed domain name resolves to a website that is unrelated to Complainant. That website consists solely of an attorney referral service. Respondent receives a fee for his attorney referral services. This is not a bona-fide use under the Policy. Complainant cites UDRP precedents to support its allegation.
Further, says Complainant, there is no apparent relation between Respondent and Southern California or South Carolina. Respondent appears to be located in Denver, Colorado.
Complainant alleges that, by registering and using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s marks as to the source sponsorship, affiliation, or endorsement of Respondent’s website. This constitutes bad faith use and registration in the sense of the Policy.
B. Respondent
The Respondent states that he operates in Colorado, USA.
According to Respondent, there are no references to SC EDISON in the Complaint, annexes or documentation. Furthermore, nothing in the Complaint, annexes and documentation associates SC EDISON to Complainant, its products and services or its SOUTHERN CALIFORNIA EDISON and SCE service marks and trademarks. The entire Complaint relies on a fabricated, non-existent, imaginary and hypothetical double “e” typo to manufacture SCE EDISON out of the generic domain SCEdison.com in order to bring light to its SCE mark – a mark not even exclusive to Complainant’s goods and services.
Respondent alleges that he reserved the disputed domain name over 9 years ago because it is a generic domain comprised of two generic, common use and geographic terms “SC” and “Edison”. “SC” could refer to any of a number of geographical areas, such as South Carolina, Southern Colorado, or activities such as Sailing Club, or entities such as Securities Commission, Security Council, etc. “Edison” is a geographic area in various states and is commonly uses as a last name and first name.
Respondent states that Complainant dwells on how “SCEdison.com” is displayed on Respondent’s webpage – presumably instead of something like “scedison.com” or “Scedison.com”. For several years it has been Respondent’s webpage policy to capitalize the first letter of each word or abbreviation in a domain for branding purposes, such as ILoveMyBaby.com, NELaw.com, SFLegal.com, etc. Such a policy is commonly used by many web sites.
According to Respondent, Complainant’s fabricated hypothetical double “e” typo claim used to equate SC EDISON to SCE EDISON is as overbroad as claiming an “i” typo in the social networking business operating at “SocialEdison.com” as being the same as “SoCalEdison.com”, or equating “GE.com” to “GEE.com”.
Further, says Respondent, the SCE mark is not unique or exclusive to Complainant or Complainant’s goods and services by any stretch of the imagination. For example, South Carolina Electric & Gas (SCEG.com), which offers the same goods and services as the Complainant, owns USPTO SCE&G marks. Other registered SCE marks include Saginaw Control & Engineering, SCE Unlimited (Shutters, Closets and Exteriors), Sony Computer Entertainment, FK Automotive, Tyco Electronics, Manhattan Associates and South County Enterprises, etc.
Respondent alleges that the Complaint may be subject to the US legal doctrine called laches. For the reasons given below, the Panel will not consider that issue, so the Respondent’s arguments will not be summarized here.
Respondent states that he rejects all of Complainant’s claims that his use of the disputed domain name is not bona-fide. A search of the South Carolina Secretary of State yields several entities that incorporate “Edison”, in whole or in part. There is no reason to believe a filing or common law usage for legal services for SCEdison could not exist considering a GREdison entity exists. The disputed domain name is a generic domain comprised of two generic, common use and geographic terms “SC” and “Edison”. Furthermore, it is well within reason to envisage that an attorney “S.C. Edison”, three attorneys partnering to form “Smith, Collins & Edison” or our geographic legal assistance reference “South Carolina Edison” could find use in the disputed domain name.
Respondent states that he is using the disputed domain name to offer legal services, insurance quotes, apartments, home loans, homes, car parts, online meds or any other lawful goods and services. Respondent rejects all of Complainant’s claims that it owns and operates the disputed domain name in bad faith. Complainant does not have exclusive rights in SCE and it does not even have exclusive rights in SCE for providing electricity and related goods and services nor does it have any rights in SC EDISON.
Further, says Respondent, his business model and use of the disputed generic domain does not compete with the Complainant’s business model of providing electricity and related goods and services. Furthermore, the website at the disputed domain name does not mislead or misdirect Internet users to Complainant and does not represent itself as Complainant. Complainant has provided no evidence suggesting an Internet user keying in “SCEdison.com” would be looking for the Complainant.
The Respondent states that the UDRP is intended to administratively resolve obvious violations of Trademark and Service Mark rights and the Complainant does not even remotely qualify for that relief:
a) The Complainant does not have rights in SC EDISON.
b) The Complainant’s fabricated, non-existent, imaginary and hypothetical double “e” typo claim to manufacture SCE EDISON out of the generic disputed domain name is unfounded.
c) The Complainant does not have exclusive rights in SCE – even in its use of SCE.
d) The Respondent has demonstrated its bona-fide use of the disputed domain name which does not even remotely compete with the Complainant.
e) The Respondent has not engaged in bad faith with the Complainant in any capacity.
C. Additional Submissions
Complainant
In response to Respondent’s assertion that Complainant has no rights in the term “SC EDISON”, Complainant states that its marks are well-known and that the disputed domain name, being composed of parts of Complainant’s marks, is confusingly similar, in the sense of the Policy, to the disputed domain name, regardless of whether or not Complainant uses the term “SC EDISON”.
Further, says Complainant, the fact that other companies have marks including the term “SCE” is not relevant, because those marks do not consist of the term “SCE” alone.
According to Complainant, the disputed domain name is an abbreviated form of its mark Southern California Edison, and thus confusingly similar to its mark.
Complainant states that Respondent’s argument regarding the possible existence of entities that would have rights or legitimate interests in the disputed domain name (such as a South Carolina lawyer called Edison) are irrelevant. The issues is not whether some other entity could have rights or a legitimate interest in the disputed domain name; the issue is whether Respondent has such rights or legitimate interest.
According to Complainant, Respondent is located in Denver, Colorado and has no apparent connection with South Carolina or with any other facet of the disputed domain name. Nor has Respondent argued any such connection with any facet of the disputed domain name.
Complainant states that Respondent’s arguments to the effect that he is not competing directly with the Complainant are irrelevant. According to Complainant, the mere use of the disputed domain name misleads and misdirects, and Respondent’s use of the capitalized form “SCEdison.com” on his web site reinforces the confusion.
Complainant responds to the allegation of laches raised by Respondent. For the reasons given below, the Panel will not consider that issue, so Complainant’s arguments will not be summarized here.
Respondent
In his additional submission, Respondent stresses that the disputed domain name contains a single letter “e” and is thus not the concatenation of SCE and EDISON. Thus he has not engaged in typo-squatting.
Respondent presses his case using arguments similar to those presented in the Response, for example stating that SCE&G is a mark which does not infringe on the Complainant’s marks.
Complainant owns trademark rights in the marks SOUTHERN CALIFORNIA EDISON and SCE.
Complainant has not authorized the Respondent to use its marks and there is no connection between Complainant and Respondent.
Respondent is using the disputed domain name to point to a web site offering referrals to legal services and he derives revenue from the click-through referrals.
Neither Respondent nor the business advertised on his web site have any relation to a geographical entity that could be abbreviated as “SC”, for example Southern California or South Carolina, nor do they have any relation to “Edison”.
Paragraph 15(a) of the Rules instructs this Panel to "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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
However, before dealing with those issues, the Panel will first deal with the issue of laches raised by the Respondent. The Respondent claims that the Complainant is subject to the doctrine of laches due to its failure to bring this action until 8 years after the disputed domain name was registered.
The Panel finds that, in accordance with UDRP case law, the doctrine of laches does not apply as a defense under the Policy. Consequently, the Panel will not consider those arguments. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Complainant has established its rights in the SOUTHERN CALIFORNIA EDISON and SCE marks by registering those marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,409,730 registered December 5, 2000). Thus the Complainant has satisfied the rights requirement included in Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark).
Complainant contends that Respondent’s <scedison.com> domain name is confusingly similar to its SOUTHERN CALIFORNIA EDISON and SCE marks. According to Complainant, the disputed domain name is comprised of a simple abbreviation of the mark, “scedison,” along with the generic top-level domain (“gTLD”) “.com.” The Panel finds that abbreviating the mark while maintaining its distinctive characteristics does not sufficiently differentiate the disputed domain name from Complainant’s mark, thereby making the two confusingly similar under Policy ¶ 4(a)(i). See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Thus the Panel finds that Complainant has satisfied its burden of proof with respect to Policy ¶ 4(a)(i).
Complainant argues that Respondent is not commonly known by the disputed domain name. Respondent does not challenge that statement and admits that neither he, nor his business, have any relation to a geographical entity that could be abbreviated as “SC”, for example Southern California or South Carolina.
Respondent asserts that he has rights and legitimate interests in the disputed domain name, but does not give any specific arguments to justify that assertion, much less offer evidence to that effect. Respondent’s arguments are limited to alleging that other entities which operate in certain geographical areas or have certain names could have rights or legitimate interests in the dispute domain name. But those arguments are not relevant for the present case. As Complainant correctly points out, the issue is not whether somebody else could have rights or legitimate interests in the disputed domain name, but whether Respondent has such rights.
Complainant also argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Indeed the disputed domain name resolves to a site offering links to third-party businesses that are not related to the Complainant and that have no obvious relation to any part of the disputed domain name, that is, the businesses are not related to “EDISON” nor are they related to a geographical area that could be abbreviated as “SC”. Previous panels have determined that such use does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Therefore, the Panel does not accept Respondent’s allegation that he has rights or legitimate interests in the disputed domain name and it finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Complainant asserts and provides evidence to show that Respondent is gaining commercially from the operation of the disputed domain name, and Respondent does not deny this. The disputed domain name resolves to a website offering links to third-party businesses unrelated to Complainant. Internet users may arrive at the website and then click on one of the links offered, diverting them to that third-party website. Each time this happens, Respondent collects a click-through fee from the linked site. This constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <scedison.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: September 26, 2011
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