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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Southern Company v. ZJ

Case No. D2007-0902

 

1. The Parties

The Complainant is The Southern Company, Atlanta, United States of America, represented by Troutman Sanders LLP, United States of America.

The Respondent is ZJ, Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <southercompany.com> is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on June 19, 2007, and in hard copy on July 10, 2007. On June 21, 2007, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On June 21, 2007, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the administrative and technical contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 July 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2007.

The Center appointed David J.A. Cairns as the sole panelist in this matter on August 30, 2007. 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 one of the largest producers of electricity and suppliers of energy-related services in the United States of America. It provides electric generation, transmission and distribution services, as well as other services such as telecommunications services through related companies.

The Complainant is the registered owner of the numerous trademark registrations for or including the words SOUTHERN COMPANY in the United States of America and around the world. The trademarks registered with the United States Patent and Trademark Office for various international classes include the following: (i) Registration Nє 2163676 for the word mark SOUTHERN COMPANY registered on June 9, 1998, and based on a first use in commerce of August 2, 1976; (ii) Registration Nє 2174592 for the word mark SOUTHERN COMPANY registered on July 21, 1998, and based on a first use in commerce of August 4, 1996; (iii) Registration Nє 2176397 for the word mark SOUTHERN COMPANY registered on July 28, 1998, and based on a first use in commerce of August 1, 1995; (iv) Registration Nє 2174591 for the word mark SOUTHERN COMPANY registered on July 21, 1998, and based on a first use in commerce of April 23, 1987; (v) Registration Nє 2174593 for the word mark SOUTHERN COMPANY registered on July 21, 1998, and based on a first use in commerce of April 23, 1987; and (vi) Registration Nє 2174589 for the word mark SOUTHERN COMPANY registered on July 21, 1998, and based on a first use in commerce of June 16, 1982.

The SOUTHERN COMPANY trademark has been the subject of tens of millions of dollars of advertising and promotion in the United States of America, and billions of dollars of services.

The Complainant owns and operates the website at <southerncompany.com> to provide information about its business and services.

The Respondent is ZJ, with address in Zhangyang, Shanghai, Shanghai, China. The Respondent registered the disputed domain name <southercompany.com> on November 27, 2005, and is currently using the disputed domain name as a portal with an index of links to further webpages by means of a short list of services or names. Some of the webpages accessed from this list give further links described as ‘Sponsored Links’. The list on the portal includes a category called ‘Southern Company’. The webpage at ‘Southern Company’ has a further list of links based on the word ‘Southern’. These links include links to the Complainant’s website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has continuously and exclusively been using the SOUTHERN COMPANY trademarks since before 1950 throughout the United States of America in interstate commerce. In addition, the Complainant owns many international registrations for its SOUTHERN COMPANY trademarks which, together with its registrations in the United States of America, establish the Complainant’s exclusive right to use the SOUTHERN COMPANY trademarks in the United States of America and internationally.

The Complainant submits that it has invested a substantial amount of time, money and other resources promoting its SOUTHERN COMPANY trademarks and has established a tremendous goodwill in these marks.

The Complainant contends that the disputed domain name is identical or confusingly similar to the SOUTHERN COMPANY trademarks in substance, appearance, pronunciation and sound except for the spelling of the word “southern” which is incorrectly spelled as “souther”.

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name since the Respondent has never been identified by the “Southern Company” name. The Respondent has also not been authorized by the Complainant to use the SOUTHERN COMPANY trademarks or to apply for or use these trademarks in a domain name. Moreover, the Respondent is not making a legitimate non-commercial or fair use of the domain name, but using it to misleadingly divert users to its web page with the purpose of receiving payment when Internet users click on the links or advertisements on the page, thereby improperly profiting from the SOUTHERN COMPANY trademarks and its associated goodwill.

The Complainant contends that the disputed domain name has been registered and is being used in bad faith because the Respondent does not conduct any legitimate business under the domain name. In addition, the Respondent has intentionally intended to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement by the Complainant. Furthermore, typosquatting is of itself evidence of bad faith. Also, in diverting users to its web page, the Respondent is disrupting the Complainant’s business. The Complainant contends that the Respondent has registered and used the disputed domain name with full knowledge that it is virtually identical to the Complainant’s trademarks and domain name.

In addition, the Complainant contends that the Respondent has already engaged in a pattern of typosquatting of well-known trademarks as evidenced by the fact that it has already been found to have unlawfully registered and used domain names that were confusingly similar to the trademarks of others in at least five other occasions.

The Complainant contends that the Respondent’s use of the disputed domain name causes serious and irreparable injury and damage to the Complainant and to the goodwill associated with its trademarks. In addition, the Complainant contends that the Respondent’s use of the disputed domain name also amounts to an infringement of the Lanham Act.

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 the 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 Patent and Trademark Office registrations for the SOUTHERN COMPANY trademarks referred to above, as well as many other United States and international registrations comprising or including the words SOUTHERN COMPANY.

The disputed domain name is not identical to the SOUTHERN COMPANY word mark, differing in the omission of the letter “n” from the word ‘Southern’.

The Panel finds that the disputed domain name is confusingly similar to the SOUTHERN COMPANY trademarks because: (i) the omission of the single letter that distinguishes the disputed domain name from the Complainant’s trademarks is of little visual or phonetic significance; (ii) the overall appearance of the disputed domain name immediately suggests the two words ‘southern company’; (iii) additionally the disputed domain name is likely to confuse Internet users because of the recognition and secondary meaning of the SOUTHERN COMPANY trademarks based on their long and widespread use.

In light of the foregoing the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s SOUTHERN COMPANY trademarks.

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 SOUTHERN COMPANY marks 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; and (iv) the Respondent is using the disputed domain name to generate revenue through sponsored links.

Paragraph 4(c) of the Policy provides a list of three circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name. There is no evidence before the Panel of the existence of any of these circumstances in the present case. In relation to paragraph 4(c)(i) and (iii) the Panel finds that the Respondent’s use of the disputed domain name is for commercial gain through sponsored links, and also that a use of the disputed domain name to attract Internet traffic to a website based on confusion, inadvertence or error (through the misspelling of the Complainant’s mark by Internet users) is not a use in connection with a bona fide offering of goods or services.

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 acquired rights or legitimate interests in respect of the domain name, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

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.

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 Panel is satisfied that the disputed domain name has been registered and is being used in bad faith within the meaning of 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 sponsored links. The likelihood of confusion as to source, sponsorship, affiliation or endorsement is established by the fact that the disputed domain name is confusingly similar to the Complainant’s SOUTHERN COMPANY trademarks, and might be reached by a simple typing error by Internet users.

Further, the Panel is satisfied that the Respondent deliberately chose the disputed domain name to take advantage of the Complainant’s goodwill and the Internet traffic associated with the Complainant’s website. This is a clear case of typosquatting which, in itself, constitutes registration and use in bad faith (see National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini WIPO Case No. D2002-1011; January 21, 2003: “Typosquatting….is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”.

Thus, the Panel is satisfied that the disputed domain name was registered and is being used in bad faith.

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 <southercompany.com> be transferred to the Complainant.

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David J.A. Cairns
Sole Panelist

Dated: September 13, 2007